Aug. 19 (Bloomberg) -- A judge will decide later whether to cancel Christian Louboutin SA’s trademark for high-fashion red-soled women’s shoes in the company’s lawsuit against Yves Saint Laurent America.
Louboutin’s lawyers urged U.S. District Judge Victor Marrero in New York not to convert his earlier refusal to bar Yves Saint Laurent from selling its own red-soled shoes into an outright cancellation of the U.S. trademark. The judge said today he will delay a ruling while Louboutin appeals his decision.
“The better course is to simply allow the appeal to proceed and halt any further proceedings till we get guidance” from the New York-based federal circuit court, Marrero said.
The judge on Aug. 10 rejected closely held Louboutin’s request for a preliminary injunction to protect the trademark while the case proceeds, saying it’s not likely to win its fight for a trademark for a color.
“Color serves ornamental and aesthetic functions vital to robust competition,” the judge said, and “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 the lawsuit, filed in April, that Yves Saint Laurent’s red-soled shoes “threaten to mislead the public.”
YSL’s Red Soles
Yves Saint Laurent, a unit of Paris-based PPR 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, said at a hearing last month.
Lee C. Bromberg, a lawyer for Louboutin, argued today that the company needed more time to show why the trademark shouldn’t be canceled.
“We need an additional opportunity to marshal evidence,” Bromberg told the judge. He said he seeks evidence on how the fashion industry operates, how designers select colors and whether Louboutin’s trademark would be a “hindrance to competition,” as the judge indicated in his ruling.
Jyotin Hamid, a lawyer for Yves Saint Laurent, argued that a search for evidence would be time-consuming and costly.
“The fundamental fact that color serves a function in fashion is not in dispute,” Hamid said. “The facts are not going to change as a result of reviewing e-mails in France.”
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.
All of Louboutin’s luxury shoes have had red soles since their introduction in 1992, according to court papers. “Louboutin is only in the shoe business,” Bromberg said.
Louboutin’s high-heeled shoes are priced from $535 to $4,645 a pair on the website of department store Barneys. They have been popularized by actresses such as Sarah Jessica Parker in the television show “Sex and the City.”
The U.S. Patent and Trademark Office awarded Louboutin a trademark for the red sole in 2008, according to the company’s complaint.
Paris-based PPR also owns luxury brands including Gucci. PPR fell 1.05 euro, or 1 percent, to 105.3 euros in Paris.
The case is Christian Louboutin SA v. Yves Saint Laurent America Inc., 11-2381, U.S. District Court, Southern District of New York (Manhattan).
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