Luxury shoe designer Christian Louboutin has been denied its attempt to register its red sole shoe as a trademark in Switzerland.
Possibly one of the most discussed trademarks in the world of fashion and the subject of a number of referrals and decisions, the Christian Louboutin red sole trademark is once again the subject of a legal dispute, this time in the Swiss courts.
In a court ruling from April 27th 2016 handed down by Judge Vera Maran Telli in the Federal Administrative Court (published May 12th). The French designer was told its red sole shoe was a 'decorative feature' and could not be granted trademark protection.
In March 2010 Louboutin put forward an application to the Organization Mondiale de la propriété intellectuelle (WIPO) for the extension of trademark registration protection of its red sole shoes in Switzerland. In a decision of 1 September 2013, the lower court rejected the application for registration of the red sole as a trademark on the grounds that the red color on the sole of the shoe was 'banal' and would be perceived as a 'decorative element' and thus lacked concrete 'distinctiveness' and belongs to the 'public domain.'
The basic principles for trademark protection in Switzerland are laid down in the Federal Law on the Protection of Trademarks and Geographical Indications 1992 and the Trademarks Regulation 1992. Swiss trademark law allows for the registration of a variety of traditional and non-traditional marks including, three-dimensional marks, colours, and position marks. In practice, the legislation is largely in harmony with the EU First Trademarks Directive (89/104/EEC). However, Switzerland is not a member of the European Union and is thus not covered by the Community trademark regime.
In concluding that the disputed mark belongs to the public domain: the court clarified that “the bottom of a woman's shoe sole is basically no position at which the attachment of a brand appears” and that red “in connection with the claimed products - high-heeled women's shoes...for goods from the fashion industry" are “often used as a decorative element” confirming that “the relevant public in this case, mainly female purchasers with slightly elevated fashion sense, would see colour or in this case see red soles with high-heeled women's shoes primarily as a decorative element and not as a trademark.”
Louboutin referred to the fact that its red soled shoes had been referred to in numerous foreign judgments as distinctive and is registered as a European Community trademark with protection in the EU region as well as international protection in other countries such as China, Australia, Russia, Ukraine, Monaco, Singapore and Norway. To which the courts stated that “foreign decisions and registrations "have no prejudicial effect” and herein "no influence on the outcome of these proceedings."
In light of the above the court rejected the designers claims for trademark protection - dismissing the appeal and confirming the judgement of the lower court. The luxury brand now has 30 days with which to appeal this recent decision to Switzerland’s highest Federal Court.
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