Failure to grant the injunction, which Louboutin argued was vital to protect its trademark for lacquered red soles, opens the door for YSL and other brands to retail red-soled shoes without fear of effective legal action from Louboutin.
‘Because in the fashion industry color serves ornamental and aesthetic functions vital to robust competition, the court finds that Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection, even if it has gained enough public recognition in the market to have acquired secondary meaning,’ Judge Victor Marrero wrote in his ruling.
Louboutin’s lawyer, Harley Lewin of McCarter & English LLP, told news sources that his client was ‘profoundly disappointed’ in the judge’s decision.
‘While he acknowledges the fashion industry at large has recognized the Louboutin Red Sole as a trademark source indicator, he has concluded that the fashion industry needs to use colors on outsoles without restriction…. We will evaluate all the alternatives available in the days to come.’
YSL’s representation, David Bernstein of Debevoise & Plimpton LLP, struck a triumphant note.
‘We're gratified that Judge Marrero has agreed with YSL that no designer should be allowed to monopolize a single color for an article of apparel,’ he said. ‘[T]his is a trademark registration that never should have issued, and we are pleased that Judge Marrero has agreed that the registration likely should be cancelled.’
The decision is the first ruling in what legal experts expect to be a drawn-out trial that could overturn a trademark granted to Louboutin in 2008. Should YSL prevail, the brand’s lawyers said that they will pursue counterclaims against Louboutin for forcing stores to pull red-soled shoes off of shelves before the trial commenced. That, and red-soled shoes will appear on store shelves from the YSL boutique to Primark.
In his ruling, Judge Marrero acknowledged that red soles remain firmly associated with Louboutin.
‘When Hollywood starlets cross red carpets and high-fashion models strut down runways, and heads turn and eyes drop to the celebrities' feet, lacquered red outsoles on high-heeled black shoes flaunt a glamorous statement that pops out all at once. For those in the know, cognitive bulbs instantly flash to associate: “Louboutin.”’
For now, anyway.
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