Supreme Court: no protection for Christian Louboutin's red sole mark

Switzerland

The Swiss Supreme Court has confirmed the decision of the Swiss Federal Administrative Court denying protection to Christian Louboutin’s red sole mark for ladies' footwear in Class 25 of the Nice Classification (Case 4A_363/2016, February 7 2017).

French fashion designer Christian Louboutin applied for protection in Switzerland of the international trademark No 1031242 in Class 25, based on his French trademark. The trademark is depicted as follows:

On March 15 2011 the Federal Institute of Intellectual Property (IGE) denied protection, arguing that the red sole mark was not distinctive and belonged to the public domain. Subsequently, Louboutin argued - unsuccessfully - that the trademark had gained secondary meaning. On September 1 2013 the IGE ultimately refused protection. 

Louboutin appealed to the Swiss Federal Administrative Court. He no longer claimed that the mark had acquired secondary meaning but, rather, that the mark was distinctive. The court dismissed the appeal in its entirety, based on the same arguments as the IGE.

Louboutin appealed this decision to the Swiss Supreme Court. The Supreme Court shared the opinion of the Administrative Court, holding that the red colour of the sole, without any verbal elements, would not be recognised as a trademark but, rather, would be perceived as a decorative element. Even though the colour red might be unusual for soles (unlike brown or black), this would not be sufficient for the red sole to be perceived as a distinctive sign, especially since the colour red is often used as a decorative element in fashion. The fact that the trademark is registered abroad does not change Switzerland's clear practice and jurisprudence, which would deny protection for the sign in question.

As the jurisprudence in Switzerland is quite strict with regard to colour trademarks (even though the mark at issue here was a position mark, but consisted of a single colour), Louboutin was in difficult position right from the start. The only way of obtaining protection for the red sole mark in Switzerland will now be to show secondary meaning, possibly in a few years' time.

Marco Bundi, Meisser & Partners AG, Klosters

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