The shoe that fits Louboutin pinches Van Haren

Netherlands

The high-heeled red-sole shoes of Christian Louboutin are well known all over the world. They are favourites among celebrities and cost up to €4,000 a pair. For those women who cannot afford to pay such prices, Dutch shoe company Van Haren had a solution: a similar high-heeled red-sole shoe for just €40.

However, Van Haren did not take into account the fact that Louboutin owned a 'sole' trademark for high heels. Louboutin summoned Van Haren to appear in preliminary relief proceedings, and on April 18 2013 the Court of The Hague delivered its judgment.

Louboutin claimed to own a registered ‘sole' trademark for its red sole in the Benelux. This trademark was described as follows:

 "Red - the trademark consists of the colour red applied to the sole of a shoe as shown in the trademark registration; the outline of the shoes is not a part of the trademark, but serves to indicate on which part of the shoes the trademark is applied."

Van Haren claimed that Louboutin's trademark was an abstract colour mark and, therefore, strict registration rules applied. The interim relief judge decided that the red sole trademark was not an abstract colour mark - it was a hybrid colour mark, since it presented not only the characteristics of a specific colour, but also of a three-dimensional trademark, as the description of the mark defined how and where the colour red should be applied to the shoe.

Further, the judge found that Louboutin had demonstrated that its red sole mark was perceived as a trademark by the relevant public in the Benelux. Louboutin did not use the red sole only in an ornamental manner (as Van Haren claimed) and, therefore, the relevant public perceived it as a indication of origin. The red sole mark was thus distinctive.

Van Haren’s argument that Yves Saint Laurent also uses red soles that are similar to Louboutin’s also failed. The judge stated that Van Haren used the red sole consistently on all its high-heeled shoes, while Yves Saint Laurent used different coloured soles and only used red coloured soles incidentally.

The judge thus found that Van Haren had infringed Louboutin’s red sole mark under Article 2.20(1)(b) of the Benelux Convention on Intellectual Property. Although there was no aural or conceptual similarity between the parties' signs, there was a visual similarity, as Van Haren used (almost) the same colour in an identical position (ie, the sole) of identical goods (ie, high-heeled shoes). This conclusion was not altered by the fact that Van Haren's shoes had a black coloured frame on the sole - the overall impression was still the same.

Another factor was the fact that consumers did not have the possibility to compare the shoes directly, and had to rely on an imperfect recollection. Therefore, the similarities between the signs outweighed the differences. The court noted that, although consumers might not be confused when considering a purchase (as Louboutin's shoes are available only in exclusive shops at a price significantly higher than Van Haren's shoes), the similarity of the shoes can lead to post-sale confusion.

The judge concluded that Van Haren's shoes infringed Louboutin’s red sole mark, since the relevant public might be confused as to the origin of the goods, taking into account the distinctiveness of the red sole mark, the identity of the goods and the high degree of similarity of the signs.

Michiel Rijsdijk, Arnold + Siedsma, Amsterdam

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