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Louboutin’s fight to trade mark its red soles comes to Australia
Christian Louboutin, as fans of the hit show Sex and the City already know, is celebrated for the distinctive bright red underside of its sky-high heels.
It’s a style that’s been nodded to in the past by the likes of Spanish fashion retailer Zara, and more recently by rival French designer Yves St Laurent, which created a monochrome solid red shoe as part of a colourful range of single-coloured footwear.
That was enough for Louboutin to see red and it sued YSL for trade mark infringement in the United States.
At first instance, the Court found against Louboutin, holding that a single colour could not be trade marked for fashion items. But earlier this year, a three-judge panel on the 2nd US Circuit Court of Appeals upheld Louboutin’s red sole trade mark but only in circumstances where the rest of the shoe is a different colour. Or, in the words of the Appeal Court, “it is the contrast between the sole and the upper that causes the sole to ‘pop’ and to distinguish its creator”.
While Louboutin succeeded in maintaining trade mark protection for its red soles in the US, it was unsuccessful in its action against YSL because the YSL shoe was red all over.
More recently in Australia, Louboutin has filed a trade mark application for its red soles, specifically Pantone No 18.1663TP applied to the sole of a shoe. The application was eventually accepted after a lengthy examination process and Louboutin’s red soles were due to be registered as a trade mark in Australia on 2 November 2012. However, a potential opponent has now asked IP Australia for extra time to file a notice of opposition. The potential opponent – you guessed it – is Yves St Laurent.
YSL have until 2 February 2013 to formally oppose Louboutin’s trade mark application.
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