WTO Intellectual Property
The creative mind behind the red-sole women's shoes popularized by the characters on "Sex and the City", Christian Louboutin SA, shall come to know if Yves Saint Laurent America Inc. should stop selling its red-soled footwear until the resolution of a trademark lawsuit.
Christian Louboutin has sued Yves Saint Laurent America over claims its red-sole shoes are "virtually identical" to Louboutin's trademarked products, and a decision needs to be arrived at very soon. The case is Christian Louboutin SA v. Yves Saint Laurent America Inc., 11-2381, U.S. District Court, Southern District of New York (Manhattan.)
The red sole shoes are strictly associated with Louboutin, and it is the bread and butter for his company.
The prices for Louboutin red-sole high-heeled range from $319 to $4,645 a pair. A sale figure from the red-sole shoes in the U.S. in 2011 is estimated at $135 million, a 20% increase from 2010.
However, the lawyer for Yves Saint Laurent claims that their use of red-sole shoes dates back long before Mr. Louboutin began using them. Yves Saint Laurent, the company named for the designer who died in 2008, is a unit of Paris-based PPR (PP), which owns other luxury brands including Gucci.
Louboutin, the designer, got the idea for the red soles when he painted red nail polish on the black soles of a pair of women's shoes. Introduced in 1992, the shoes were popularized by actresses like Sarah Jessica Parker in the show "Sex and the City". Since then, the sale figures have been spiraling upwards.
The design elements, including the shade of red on a sole, that would be considered infringements of the company's trademark, were questioned upon repeatedly. However, the designer in testimony given in a deposition, couldn't immediately tell whether some shoes showed to him infringed his trademark.
Yves Saint Laurent has made sales of 1,631 pairs of red- sole shoes in the U.S. in the 2010-2011 season, compared with 1,227 the year before. An appeal for the denial of the preliminary injunction has been made. There is no irreparable injury.
The U.S. Patent and Trademark Office awarded Louboutin a trademark for the red sole in 2008, according to the complaint. Saint Laurent has been selling red-sole shoes under brand names such as Tribute, Palais and Woodstock at high-end fashion stores that also sell Louboutin footwear, including Saks Fifth Avenue, Barneys New York and Bergdorf Goodman, according to the complaint.
Official website of Christian Louboutin.
Official website of Yves Saint Laurent.
Trademark infringement is a violation of the exclusive rights attaching to a trademark without the authorization of the trademark owner or any licensees (provided that such authorization was within the scope of the license). Infringement may occur when one party, the "infringer", uses a trademark which is identical or confusingly similar to a trademark owned by another party, in relation to products or services which are identical or similar to the products or services which the registration covers. An owner of a trademark may commence legal proceedings against a party which infringes its registration.