C. En particulier: le sondage d’opinion
IV. From Theory to Practice: Examples of Product Designs and Aesthetic
Non-Traditional Trademarks
A. «My Louboutin Shoes»: The (Legal) (Hi)Story of the Red Lacquered Sole
Louboutin’s red lacquered sole shoes are known worldwide today.What is less known is perhaps that their creator, Christian Louboutin, started designing shoes for the dancers of the Parisian cabaret «Les Folies Ber-gère.» He later worked with the maison Chanel and Yves Saint Laurent61 and founded his own label in the early 1990’s. At that time, inspired by his assistant’s bold red nail color, Christian Louboutin create the design of the soon-to-be-famous red lacquered shoes.62In a few years, the inde-pendent consulting firm The Luxury Institute named the shoes as the most desirable shoes in the world.63Renowned for their appeal, the shoes have been featured in award-winning TV series like HBO’sSex and the City, and celebrities like Madonna have popularized them by wearing them in multiple music videos. Jennifer Lopez even dedicated a song to
«My Louboutin Shoes.»64To date, Louboutin stores span over 30 coun-tries and their products are also available through numerous retailers and online marketplaces.
Throughout the years, the Louboutin maison has made significant efforts to protect the unique color of the sole of its shoes. It filed several trade-mark applications for the red soles feature of the shoes in most counties where it has a store65including France, Mexico, Singapore, New Zealand, Australia, the U. S., Moldova, the Philippines, Cambodia, Laos, Brunei, Indonesia, Morocco, Bahrain, Chile, Israel, Switzerland, Vietnam,
Ma-61 HADLEYFREEMAN, Christian Louboutin: How Killer Heels Conquered Fashion,The Guardian, Mar. 19, 2010, available: https://www.theguardian.com/lifeandstyle/
2010/mar/19/christian-louboutin-high-heels, accessed on August 22, 2019.
62 CHRISTIANLOUBOUTIN/PHILLIPPEGARCIA, CHRISTIANLOUBOUTIN(2011).
63 The Luxury Institute, «Most Desirable Brands», available: http://luxuryinstitute.
com/LuxuryInstitute/, accessed on August 22, 2019.
64 JENNIFERLOPEZ, LOUBOUTINS(Epic Records, 2009).
65 RASHIGAHLAUT, Louboutin’s‘Red Sole’Declared as a Well-Known Trademark by Delhi HC, KHURANA& KHURANA, Dec. 30, 2017, available at http://www.khura naandkhurana.com/2017/12/30/louboutins-red-sole-declared-as-a-well-known-trademark-by-delhi-hc/, accessed on August 22, 2019.
laysia, and India.66The first of such applications was filed in France in 2000, where it was initially rejected.67 It was only after a reapplication that the Louboutin maison succeeded in registering the mark in France in 2009.68As I note, this registration was later cancelled following litiga-tion with fast-fashion company Zara. Still, after obtaining the trademark in France, Louboutin filed for an EU-wide application and sought pro-tection in a variety of countries through the international filing system administered by the World Intellectual Property Organization (WIPO).69 Like the original French application, the EU application was rejected at first in 2010. The mark was registered following the deci-sion of the Board of Appeals in January of 2013.70Louboutin was also able to secure registrations in Germany, Belgium, and the Netherlands.
Instead, in Switzerland, the Swiss IP Office also refused to register the mark in 2017.71
In the U. S., Louboutin was granted federal registration in 2008.72The company also applied for trademark protection throughout Asia and La-tin America and obtained it in the majority of the countries in which it applied. For example, Louboutin filed in Japan shortly after the Trade-mark Act of 2014 was enacted, as the new law officially allows the regis-tration of non-traditional marks.73In India, the red sole trademark has been successfully registered after surviving numerous opposition chal-lenges. Still in India, the mark was defined to be a well-known mark in 2017.74
66 World Intellectual Property Organization, Global Brand Database V. 2019–08–20 14:11, available at http://www.wipo.int/branddb/en/, accessed on August 22, 2019.
67 LexDellmeier,Trademark Issue: Red Sole(ly) for Louboutin?, Lex Dellmeier: Intel-lectual Property Law, July 28, 2016, available: http://lexdellmeier.com/en/blog/tra demark-issue-red-solely-louboutin, accessed on August 22, 2019.
68 The mark consists of the red sole, Registration No. 3690945 (France).
69 The mark consists of the red sole, Registration No. 1031242 (WIPO International Trademarks–Madrid).
70 The mark consists of the red sole, Registration No. 011113611 (EUIPO).
71 LexDellmeier,Trademark Issue: Red Sole(ly) for Louboutin?, Lex Dellmeier: Intel-lectual Property Law, July 28, 2016, available: http://lexdellmeier.com/en/blog/tra demark-issue-red-solely-louboutin, accessed on August 22, 2019.
72 The mark consists of the red sole, Registration Nos. 3376197, 3361597 (U. S.).
73 Trademark Act (Act No. 127 of April 13, 1959, as amended up to Act No. 36 of May 14, 2014) (Japan).
74 RASHIGAHLAUT, Louboutin’s‘Red Sole’Declared as a Well-Known Trademark by DelhiHC, Khurana & Khurana, Dec. 30, 2017, available: http://www.khuranaand
One of the most famous actions filed by Louboutin for trademark infrin-gement is the one that the maison brought in the U. S. against Yves Saint Laurent (interestingly, Louboutin’s former employer). In this case, Lou-boutin attacked Yves Saint Laurent for producing a line of monochrome colored shoes, including a wholly red shoe.75YSL responded to the accu-sation by counterclaiming the invalidity of the mark and seeking its can-cellation, based on its ornamental and functional nature of the lacquered red sole.76The U. S. District Court agreed with YSL.77However, the Sec-ond Circuit Court of Appeals did not share this view and ruled that a sin-gle could be protected as a mark based on existing precedents.78Still, the court said that Louboutin could not prevent YSL from manufacturing a wholly red shoe.79 Shortly after, Louboutin sued (also unsuccessfully) Brazilian designer Carmen Steffensin in the U. S., again claiming infringe-ment of its mark. This case was followed by a 2013 settleinfringe-ment with Charles Jourdan and the retail store DSW, which agreed to discontinue their similar shoe lines.80
As these lawsuits unfolded in the U. S., Louboutin launched several pro-ceedings on the other side of the Atlantic. The maison sued Spanish retail giant Zara in France for infringement and unfair competition.81 Again, Zara counterclaimed that the mark was invalid.82 Interestingly, the French courts sided with Zara. Ultimately, the French Supreme Court ru-led that the Louboutin’s trademark was unable to be protected because the shape was imposed by its function.83Still, Louboutin retains other marks in France, notably the mark on the actual color and two-dimen-sional shape of the sole.84
khurana.com/2017/12/30/louboutins-red-sole-declared-as-a-well-known-trade mark-by-delhi-hc/, accessed on August 22, 2019.
75 Christian Louboutin S. A. v. Yves St. Laurent Am., Inc., 778 F. Supp. 2d 445 (S. D. N.Y. 2011).
76 Id. at 448.
77 Id. at 458.
78 Christian Louboutin S. A. v. Yves St. Laurent Am., Inc., 969 F.3d 206 (2d Cir. 2012).
79 Id. at 229.
80 LexDellmeier,Trademark Issue: Red Sole(ly) for Louboutin?, Lex Dellmeier: Intel-lectual Property Law, July 28, 2016, available: http://lexdellmeier.com/en/blog/tra demark-issue-red-solely-louboutin, accessed on August 22, 2019.
81 French Supreme Court, Commercial Chamber, Decision of 30 May 2012,Christian Louboutin v. Zara France(2012).
82 Id.
83 Id.
84 The mark consists of the red sole, Registration No. 3690945 (France).
Elsewhere in Europe, a German shoe retailer, Roland SE, opposed Lou-boutin’s EU trademark application but the Board of Appeal ultimately disagreed and allowed the registration.85The case eventually made its way to the CJEU, which affirmed the EUIPO’s ruling in 2016.86 Also in Belgium, two opponents challenged the Louboutin trademark. First, Dr. Adams Footwear obtained a favorable ruling in the Court of First In-stance but ultimately lost to Louboutin in the Court of Appeals.87The second opponent,Van Dalen Footwear, was also able to win in the lower court before being defeated in the Court of Appeals.88The case is cur-rently under review by the Dutch courts for further consideration of the validity of the mark.89Finally, Louboutin sued Van Haren (yet an-other shoe retailer) in the Netherlands in 2009.90 The Hague District Court ruled that the red sole was a «hybrid mark» combination of color and shape and held in favor of Louboutin.91Ultimately, the case made its way to the EU General Court that ruled that no, Louboutin’s red sole was not a valid trademark.92The case was then heard by the Court of Jus-tice of the European Union (CJEU), which had to decide whether the red sole trademark ought to be considered a shape and if so, whether it fell under the absolute grounds limitations for trademark registration.93 On June 12, 2018, the CJEU held that since Directive 2008/95 provided no definition of the concept of «shape,» the meaning should be
deter-85 Case T-631/14,Roland v. OHIM[2014] O. J. C 380 (nuance of the colour red for shoe soles).
86 Case C-515/15 P,Roland SE v. EUIPO, EUR-Lex 62015CO0515 (2016).
87 Tribunal de Première Instance [Civ.] [Tribunal of First Instance] Brussels,Louboutin tegen Dr. Adams Footwear, 2013, 482 (Belg.); Hof van Beroep [Court of Appeal]
Brussels,Louboutin tegen Dr. Adams Footwear, IEFbe 1119 decision 2014/AR/
734 (November 2014).
88 Christian Louboutin v.Van Dalen Footnote BV, District Court (Brussels), 20 March 2014, Case AR 2013–6154.
89 DON-ALVINADEGEEST, Louboutin Loses EU Trademark in Red Sole Court Case, Fashion United, Feb. 7, 2018, available: https://fashionunited.com/news/business/
louboutin-loses-eu-trademark-in-red-sole-court-case/2018020719545, accessed on August 22, 2019.
90 Aanvullende Conclusie AG HvJ EU Feb. 6, 2018, IEF 17487; IEFbe 2476; ECLI: EU:
C: 2018: 64; C-163/16 (Louboutin tegen Van Haren) Merkenrecht, available: http://
www.ie-forum.be/dossiers, accessed on August 22, 2019.
91 Id.
92 Case C-163/16, Louboutin and Christian Louboutin, June 22, 2017, EURLex 62016CC0163.
93 Case C-163/16,Christian Louboutin SAS v.Van Haren Shoenen, June 12, 2018 EUR-Lex 62016CJ0163.
mined by considering its «usual meaning in everyday language.»94The CJEU noted that original filing for the red applied to the shoe specifically stated that the contour of the shoe does not form part of the mark, further allowing the court to determine that the registration sought was for the red color applied to the shoe rather than a «shape» within the excluded trademarkable subject matter in Directive 2008/95.95 Shortly after, in June 2019, the Court of The Hague found the Louboutin red sole a valid trademark registration and therefore,Van Haren had infringed that mark.
Following the decision by CJEU, the court here believed that there were
«no longer any questions of interpretation.»96
Finally, in India, Louboutin was awarded over $100,000 (in U. S. dollars) in December of 2017.97In this case, two separate retailers were held to have infringed on the red-soled shoes; both received a permanent injunc-tion against marketing or selling their infringing product.98 However, still in India, in 2018, the High Court of Delhi refused registration of the red sole on different grounds. Here, the court held that Louboutin’s red shoe soles are not protected by trademark law because a single color is incapable of being a trademark in accordance with the Trade Marks Act of 1999.99Under that law, a «mark» is defined as including a «device, brand, heading, label, ticket…packaging or combination of colours.»100 Therefore, the court reasoned that the deliberate expression
«combina-tion of colours» means that a single coulour cannot be a mark.101The case is currently under appeal.102
94 Id. at 24. The CJEU stated that «while it is true that the shape of the product…plays a role in creating an outline for the colour, it cannot, however, be held that a sign con-sists of that shape in the case where the registration of the mark does not seek to pro-tect the shape…»
95 Id. at 9.
96 Court of The Hague, C/09/450182/HA ZA 13–999, 06–02–2019.
97 Id.at para. 73.
98 Id.at para. 74.
99 Christian Louboutin Sas v. Abubaker & Ors., (25 May 2018) CS(COMM) No. 890/
2018, 9(iii).
100Id.
101Id.
102Christian Louboutin Sas v. Abubaker & Ors., (11 April 2019) OS(COMM) No. 13/
2019.
B. «My Gucci»: Selected (Legal) (Hi)Stories of the Italian
«Gs» Monogram and Stripes
Guccio Gucci was a young hotel worker in Paris in the early 1900 s. In-spired by the leather of the beautiful suitcases of the hotel’s guests,103 he later opened a small shop selling leather goods in Florence when he returned to his native city a few years later.104Very soon, the Gucci store became a success and Mr. Gucci’s son and grandsons expanded the busi-ness to Milan and Rome.105From their very beginning, the Gucci stores were famous for their fine leather accessories, including handbags and shoes, as well as silks and knitwear.106Mr. Aldo Gucci created the official double-G logo in 1933 to honor the name of his father.107Gucci became such a famous and sought-after luxury brand that the Gucci family opened offices and stores in New York. This turned Gucci into a global status symbol, with celebrities increasingly wearing Gucci-made goods.
Still, Gucci suffered a considerable economic crisis in the 1980 s. In the 1990 s, the company went through a restructuring and designer Tom Ford was brought in to serve as Gucci’s creative director. Gucci head-quarters returned to Florence and the number of Gucci products, which had swelled to 20,000, was reduced to 5,000 to return to the exclusivity and prestige for which the Gucci brand was originally known.108 Today, Gucci is recognized as one of the most iconic brands in high
fash-ion. The Gucci products are easily identifiable from their double G logo as well as the green-red-green racing stripes, the diamond motif repeating the inverted G pattern in each corner, the stylized G mark, and the scripted Gucci design mark. These signs are all registered as trademarks.
In particular, the interlocking double-G logo has become one of the most enduring, iconic fashion symbols. The sign is a registered mark through-out the world, from Singapore to Mexico.109In general, Gucci holds 46
103 Logo My Way, The History of Gucci and Their Logo Design, Dec. 29, 2016, avail-able: http://blog.logomyway.com/history-of-gucci-and-their-logo-design/, ac-cessed on August 22, 2019.
104 The House of Gucci,Gucci History–The 1920s, available: http://www.gucci.com/
us/worldofgucci/articles/history-1920, accessed on August 22, 2019.
105 Id.
106 Logo My Way,supranote 103.
107 Id.
108 The House of Gucci,supranote 104.
109 The mark consists of the interlocking GGs, Registration No. 0119851234216
(Mex-active trademarks just in the U. S.,110covering a wide arrangement of the iconic GG design, from the original interlocking, facing G’s to a grid of interlocking and interconnecting G’s, to other designs featuring the double-G emblem.111These marks are also registered, inter alia, in Swit-zerland, Spain, Bahrain, Estonia, South Korea, Mongolia, Australia, Mor-occo, German, Chile, Laos, Israel, and Cambodia, including several re-gistration filed through the Madrid international rere-gistration system.112 The Gucci marks are also amongst the most widely reproduced and
in-fringed. In addition, invalidity claims for the Gucci marks have been pre-sented in several jurisdictions in the past years. Recently, a series of legal actions have been taken by Gucci against the company Guess, also a man-ufacturer of bags, shoes, and similar apparels as those produced by Gucci (but a considerable lower level in the luxury scale). Guess uses a design bearing a logo that is similar to the G moniker. The two brands have hashed out numerous legal battles in different countries and courts, with both sides occasionally declaring victory.
In particular, Gucci won $4.7 million in damages against Guess in the U. S. based on a ruling by the District Court for the Southern District of New York. The court held that there was a likelihood of confusion be-tween the two marks and that Guess knowingly and in bad faith copied Gucci’s stripe mark on shoes. The court also stated that Guess’s use of the pattern would likely cause dilution by blurring.113Gucci had asserted the right in its five different marks: the red-green-red stripe mark; the re-peating GG pattern; the diamond motif trade dress; the stylized G de-sign mark, and the script Gucci dede-sign mark.114Of those five, only the diamond motif trade dress was held not to be a famous mark.115 How-ever, the court denied that Guess had counterfeited Gucci’s marks,
stat-ico); The mark consists of the interlocking GGs, Registration No. 4020153387S (Sin-gapore).
110 World Intellectual Property Organization, Global Brand Database V. 2018–03–28 03:27, available: http://www.wipo.int/branddb/en/, accessed on August 22, 2019.
111 The mark consists of two mirrored Gs, Registration Nos. 11067220, 11073110 (U. S.);
The mark consists of a repeating pattern of the stylized letters «GG» surrounded by four filled squares at four corners of the letters, forming an overall diamond design pattern, Registration No. 5221475 (U. S.).
112 For example: The mark consists of two mirrored Gs, Registration Nos. 11073110 (U. S.), M-0646473 (Mongolia), 1482967 (Australia).
113113Gucci Amer., Inc. v. Guess?, Inc., 868 F.Supp.2d 207 (S. D. N.Y. 2012).
114Id. at 217–220.
115Id. at 229.
ing, «courts have uniformly restricted trademark counterfeiting claims to those situations where entire products have been copied stitch by stitch.»116
Despite this success in the U. S. court, Gucci has lost similar cases in other countries. Ayear after winning the case in New York, Guess filed suit in the Italian courts to cancel three of Gucci’s trademarks, and in turn Gucci countered with infringement.117The Italian Tribunale di Milano (Court of Milan) held that Guess’s products donotinfringe on Gucci’s products and invalidated two of Gucci’s trademarks.118The finding was based on two key differences between the Guess and Gucci products. One, the court said, was that there are graphic differences between the marks when taking the fonts, thickness, and inclination of the letters.119Two, all of Guess’s products have a visible presence of the well-known «Guess» tra-demark. This, the court said, was enough to avoid any risk of confusion for the «particularly observant and circumspect» customer.120Moreover, the court found that the mark consisting of the letter G inserted into a radial dotted pattern was invalid because it lacked distinctive character.121 The next showdown between the two brands occurred in the Paris High Court in France. Here again, Gucci argued infringement while Guess claimed that the trademarks were invalid.122The High Court dismissed Gucci’s infringement claims and revoked three of its trademarks, includ-ing the G mark.123In the lower court, the Tribunal de Grande Instance (before a panel of three justices), Gucci’s request for $62 million in da-mages was precluded.124 Instead, the brand was ordered to pay Guess
$34,000.125 In addition, the court found that Guess did not engage in counterfeiting or unfair competition.126
116 Gucci Amer., Inc. v. Guess?, Inc., 868 F.Supp.2d 207 (S. D. N.Y. 2012).
117 Tribunale di Milano (Ordinary Court of First Instance–Milan),Gucci v. Guess? Inc., No. 6095 (2013).
118 Id. at para. 54.
119 119KEVINBERCIMUELLE-CHAMOT, Gucci may be One Nail Away from a New Legal Battle, IP Kat, Oct. 6, 2015, available: http://ipkitten.blogspot.co.uk/2015/10/guc ci-may-be-one-nail-away-from-new.html, accessed on August 22, 2019.
120 Tribunale di Milano,Gucci v. Guess? Inc., No. 6095.
121 Id. at para. 75.
122 Cour de Cassation [Cass.] [Court of Cassation], Mar. 19, 2015, Decision 367605.
123 Id., para. 65.
124 KEVINBERCIMUELLE-CHAMOT,supranote 119.
125 Id.
126 Cour de Cassation, Mar. 19, 2015, Decision 367605.
Gucci also attacked Guess in China and Australia. In China, Gucci re-ceived a favorable holding in the Nanjing Intermediate People’s Court of China. The Nanjing Court found the deciding factor in the infringe-ment case was whether the marks look subjectively similar, not whether the customer will be confused.127 This contrasts with the other case where Gucci won, when the U. S. court hinged its decision on consumer confusion.128Fresh off its victory in China, Gucci opposed the registra-tion of two registraregistra-tions that Guess had filed under the Madrid Protocol based on prior marks.129 Gucci was able to adequately prove that the prior Gucci mark had established the requisite reputation and the Officer noted that the two brand’s marks share very similar design features.130 This led to the conclusion that the degree of similarity would create
cus-tomer confusion and met the reasonable doubt standard that the trade-mark law required.131Thus, Gucci was successful in its attempt to block
cus-tomer confusion and met the reasonable doubt standard that the trade-mark law required.131Thus, Gucci was successful in its attempt to block