– Anjali Shankar, Attorney –
Those of us who love fashion and have closets overflowing with more pairs of shoes than we probably need are likely familiar with Louboutin pumps. These sky-high heels have a very distinctive look and design. Louboutin heels have recently been the subject of trademark controversy here in the United States. As Tiffany Blofield noted in a blog post earlier this year, the Second Circuit has held that Louboutin was permitted to retain a trademark that related to color (the red outsole brand) in the Fashion Industry. However, the court limited the registration to a “red lacquered outsole footwear that contrasts with the color of the adjoining (‘upper’) portion of the shoe.”
The infamous heels have also been the subject of litigation abroad. On April 18, 2013, the District Court of The Hague, the leading Intellectual Property court in The Netherlands, rendered a judgment in a case involving an intellectual property dispute over the pumps. The judge ruled that pumps sold by a Dutch discounter, Van Haren, infringed Louboutin’s trademark.
Van Haren’s heels featured black colored shoes with red soles. Louboutin argued “double identity” infringement, confusion with respect to the trademark, and dilution based on the trademark infringement. The judge noted that the sole trademark coincided with Van Haren’s product, since it involved the color of the soles of the shoes. The judge also noted the visual similarity between Louboutin’s red soles and the red soles used by Van Haren in almost an identical way (notwithstanding the fact that the Van Haren heels were not as high). The judge concluded that there would be sufficient confusion based on trademark infringement under Article 2.20 of the Benelux Convention on Intellectual Property Rights and granted an injunction in Louboutin’s favor. Van Haren was ordered to refrain from selling these shoes and was additionally ordered to pay Louboutin’s legal fees.
The case demonstrates the swiftness with which the Dutch proceedings were commenced and ultimately concluded. It also demonstrates the importance of being aware of intellectual property laws in the international context.