Mr Christian Louboutin and the Christian Louboutin company v/ Zara France
Cour de Cassation - Chambre Commerciale / Court of Cassation (Supreme Court), Commercial Chamber May 30, 2012 :
- Parties : Mr Christian Louboutin and the Company Christian Louboutin v / Zara France
- Subject Matter : Colour Mark - Trade mark capable of being represented graphically – Distinctive Character
- Trademarks :
Mr. Christian Louboutin is the owner of the international semi-figurative trademark represented by a " red shoe sole " and registered for footwear in class 25, for which the graphical representation is as follows:
The company Christian Louboutin SA is the exclusive licensee of this trade mark.
Noting that the company Zara France had been marketing a model of women’s footwear with a red sole, Mr. Christian Louboutin and the company Christian Louboutin SA brought suit against the company Zara for infringement and unfair competition. By way of a counterclaim, the company Zara France invoked the invalidity of the trade mark on grounds of the lack of clear and understandable graphical representation and lack of distinctiveness.
The Cour d’Appel de Paris / Paris Court of Appeal had ruled in favour of the company Zara France’s claim of invalidity for lack of distinctiveness. Mr. Christian Louboutin and the Christian Louboutin Company lodged an appeal before the Cour de Cassation / Court of Cassation. They submitted in particular that the distinctive character of the mark must be assessed in a global manner as a whole and not in relation to each of its elements taken separately, that the systematic use of a red sole to characterise shoes did not fall within the realm of a concept and was thus easily appropriated, and that their brand was in any case very well known with a high reputation.
The Court nevertheless deemed that the Cour d’Appel in its judgment had been right to hold :
- " that it is impossible, upon examining the figure filed, to determine whether it represents the outer or the inner side of the sole and that assuming the identified figure filed as being that of a sole, its form [...] appeared therefore to be imposed by its nature or its function ".
- " that with respect to the colour red that is claimed, it is not defined by a specific Pantone colour reference that would enable it to be identified with precision, the figure that is supposed to represent the sole itself including several shades of red, darker at the lower right end and in the middle portion, brighter in the upper left section where it has, distributed over the periphery, six points or spots that are clearly lighter ".
- " that the reputation from which the company Christian Louboutin and Mr. Louboutin benefit, is attached to the concept of the systematic use of a red sole to distinctively characterise a range of shoes, not to the disputed trade mark ".
The Court thus held that in light of these findings, "which show that neither the form nor the colour of the disputed shoe sole had been appropriately illustrated in a graphical representation that would allow it to be represented visually ", the sign is devoid of any distinctive character. The Court therefore upheld the judgment having ruled the trade mark as being invalid.