IPSA Updates 1: Seeing Red

Contributed by: Li Yufei

Edited by: Benjamin Ho, Sze Yuan Lim, and Lenon Ong of the IPSA Core Team

This year, as part of a new initiative titled “IPSA Updates”, our members will be sharing real-life cases of intellectual property (IP) and their thoughts on them. First up in this series, IPSA member Li Yufei shares an IP-related issue linked to something most of us can’t live without – SHOES. In particular, the ever-famous, eye-catching, Louboutin shoes!

The Louboutin brand is a renowned footwear brand best known for its bright-red lacquered outsole. In 2008, Louboutin applied to register this particular eye-catching red sole (henceforth the “Red Sole Trademark”) and was granted federal registration. Three years later, in 2011, Yves Saint Laurent (“YSL” ) released a collection of monochrome footwear in various colours, including red. Louboutin sought a preliminary injunction preventing YSL from marketing its own red monochrome shoes or any other shoe incorporating Louboutin’s Red Sole Trademark. In response, YSL filed a counterclaim, seeking to have the court revoke Louboutin’s Red Sole Trademark, on grounds that it lacked distinctiveness and/or was merely ornamental or functional, thereby making it ineligible for trademark protection.

In the absence of inherent distinctiveness, the court focused on whether the Red Sole Trademark had achieved secondary meaning, considering several types of evidence, including consumer surveys, Louboutin’s advertising expenditures, unsolicited media coverage, and worldwide sales for footwear bearing the Red Sole Trademark. With this in mind, the court found that the Red Sole Trademark had, in fact, acquired secondary meaning. Thus, since the test for secondary meaning had been satisfied, Louboutin was entitled to retain its trademark protection.

IPSA member Li Yufei finds this to be one of the most enlivening examples of IP in practice, as it was a trademark case involving two famous fashion brand giants. More specifically, it was interesting to observe the court’s decisions addressing whether a single colour is capable of functioning as a trademark, and fashion-industry participants may protect the distinctive features of their designs by establishing secondary meaning, even if the distinguishing feature is just one colour.

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