Louboutin SA has turned to an appeals court to stop Yves Saint Laurent America from selling red-soled shoes that it claims violates its trademark.
Louboutin is asking the panel to overturn U.S. District Judge Victor Marrero’s decision in August rejecting the company’s bid to prevent Yves Saint Laurent from selling shoes Louboutin said were identical to its own. At a hearing following that ruling, Marrero said he would defer deciding whether to cancel Louboutin’s red-sole trademark until the appeals court ruled on the injunction.
“We don’t claim shades of red,” Harley Lewin, a lawyer for Louboutin, told the three appeals judges today in Manhattan. “We don’t claim anything but the mark as registered.”
The judges said they will rule later.
Yves Saint Laurent, the company named for the designer who died in 2008, began selling shoes with red outsoles “long before Mr. Louboutin began using them,” David Bernstein, a lawyer for the company, told Marrero at a hearing in July. YSL is a unit of Paris-based PPR (PP), which owns other luxury brands including Gucci.
“Our concern is, as a fashion house making monochromatic shoes, we should be able to continue doing that,” Bernstein said in court today. The monochromatic shoe is “the DNA of the brand,” he said.
Marrero said in his August opinion that “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.”
Louboutin, a Paris-based fashion company, said in a lawsuit filed in April that Yves Saint Laurent’s red-sole footwear “threaten to mislead the public.”
Christian Louboutin, the designer for whom the company is named, got the idea for the red soles when he painted red nail polish on the black soles of a pair of women’s shoes. Court papers state that Louboutin’s red soles were introduced in 1992 and have been on all of its luxury shoes since then. They have been popularized by actresses like Sarah Jessica Parker in the TV show “Sex and the City.”
On the website of high-fashion department store Barneys, Louboutin’s red-soled high-heel shoes are priced from $595 to $4,645 a pair.
The U.S. Patent and Trademark Office awarded Louboutin a trademark for the red sole in 2008, according to the lawsuit.
The case is Louboutin v. Yves Saint Laurent America, 11- 3303, U.S. Court of Appeals for the Second Circuit (Manhattan).
To contact the editor responsible for this story: Michael Hytha at email@example.com