Christian Louboutin's Red Shoe Soles are a valid Trademark.

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According to a recent decision by the Court of Justice, the red color of the Christian Louboutin shoe sole is a mark of position and not a mere form and as such constitutes a valid right of property.

This is the decision rendered by the EU Court of Justice, after the French maison had sued the Dutch company Van Haren for selling women's shoes with high heels and red soles.

The Dutch company in 2012 had started selling the "5th avenue by Halle Berry" model - and was sued by Louboutin for counterfeiting. Van Haren defended itself by invoking the "nullity" of the Louboutin brand, appealing to the fact that "the EU Directive on trademarks lists several grounds for invalidity to registration, in particular, with respect to signs consisting exclusively of the shape that gives a substantial value to the product ".

The decision c-163/16 establishes instead that the "protection" of the Louboutin brand red sole "does not concern a specific shape of high-heeled shoe sole (which would not be protected as a EU trademark), as the description of said mark expressly indicates that the outline of the shoe is not part of the mark, but only serves to highlight the position of the red color to which the registration refers. The Court also added that a trademark cannot be considered to be "exclusively from the shape where the main object of this sign is a color specified by an internationally recognized identification code".

The fashion house speaks of a "Victory for the Maison Christian Louboutin" because "the protection of the Christian Louboutin red sole brand is strengthened by the European Court of Justice". According to the company today's ruling in Luxembourg "has confirmed that the legal regime that governs the shape trademarks does not apply to the 'red sole' of Christian Louboutin", which is on the contrary "a position mark, as it has supported the Maison for many years ".

The Panther goes to Court.

By order n. 46868 filed in the Court on 13 November 2014, the Second Criminal Chamber of the Italian Supreme Court decided, to remit the examination of United Penal Sections on the following question: "if the introduction on the market of serial morphological toys, not bearing any brand, constituents the unlawful reproduction of articles protected by trademark is an offense according to Articles 473 and 474, or in art. 517

of the criminal code".

The case arose from the introduction into Italian territory of a batch of 21,822 puppets depicting a counterfeited

MGM "Pink Panther".

On the merits, the Territorial Court observed that the puppets seized strongly resemble the character "Pink Panther", which are a specific registered trademark and, therefore, as such, subject to trademark protection.

The Court is expected to rule in the next two months.

Why should you protect your IP?

Protecting IP is becoming increasingly difficult, particularly with the proliferation of online sales. The Internet has created an ideal and, often, an almost anonymous selling place for sophisticated counterfeiters of products.

Why should you protect your IP? According to a 2013 report by PricewaterhouseCoopers, the value of the global impact of counterfeit goods and illicit trade is estimated to be US$650 billion per year. That is US$650 billion of lost revenue for brand owners, authorized manufacturers, distributors and retailers of genuine goods.

Ignoring the infringement of IP rights when it arises can dilute the strength of the right itself, undermining distinctiveness (in the case of a trade mark) and the ability to stop future infringement. This has a knock-on impact on the value of goodwill of a business.

The cure? Many businesses elect to protect their IP by registering trade marks, design rights, and patents with the relevant authority (whether that is a national authority, such as the Office for Harmonization of the Internal Market (“OHIM”) or the World Intellectual Property Organization (“WIPO”).

My suggestions of ways in which a brand can strengthen its position vis-à-vis counterfeiters include the following:

  • Create a strong brand identity, using the same logos, designs, packaging etc., consistently across product lines.
  • Use security features, such as stickers, serial numbers, holograms or mylar/security strips in products to help aid detection of counterfeit goods. These details will also assist in monitoring the security of your manufacturing, distribution and retail processes.
  • Create an authorized manufacturing, distribution and retail network for products.
  • Make each entity in your manufacturing, distribution and sales chain subject to contractual obligations to protect your IP and report to you any instances where it has become aware of possible infringement, either by itself or a third party.
  • Register your IP with relevant national customs authorities to enable them to detect and detain counterfeit goods that are imported and exported, allowing you to take action, where appropriate.
  • Periodically collect and review information about any counterfeit goods that are discovered. You may choose to employ a ‘watching’ service to assist with this monitoring. This information will help you identify jurisdictions and territories where counterfeit goods are being produced as well as any weak links in your manufacturing, distribution and sales chain and the common distinguishing features of counterfeit goods.
  • Clearly allocate responsibility within an organization for dealing with infringements and maintain a portfolio of relevant information so that documents such as registration certificates, precedent letters of complaint and text for witness statements are easily accessible.

For any questions on how to protect you IP, feel free to contact: Gianpaolo Todisco at gianpaolo.todisco@tsclex.com