The Swiss Federal Administrative Court issued a decision on 27 April, agreeing with the Swiss IPO decision to refuse a trade mark application to register the colour red on the sole of a high heeled shoe.
International TM Application
The application was filed by the luxury French shoe designer Christian Louboutin as part of an International Application under no. 1031242. The International Application was based on a UK registration of the mark (see below) and designated Australia, Switzerland, China, UK, Japan, Monaco, Norway, Russian Federation, Singapore and Ukraine.
The mark consists of the colour red (Pantone No. 18.1663TP) applied to the sole of a shoe as shown in the representation (the outline of the shoe is not part of the mark it is for illustration only).
This is not the first setback for Louboutin. The International Application has already been refused in both China and Japan.
Louboutin provided evidence of acquired distinctiveness before the Swiss IPO but this evidence was not relied on in the appeal to the Federal Court. The Swiss IPO considered that the evidence showed 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."
Like the Swiss IPO the Federal Court held that the colour red was decorative and non-distinctive and provided evidence from other Swiss websites to show that red soles were frequently used on high heeled shoes by other retailers in the fashion industry.
Louboutin argued that the mark had been held to be distinctive by a number of other foreign courts. In particular, this finding differs from that of a recent case at the Court of Justice of the European Union (CJEU) where Louboutin brought about an infringement claim against a Dutch shoe retailer, who sold high heeled shoes with a red sole. In this case the CJEU found that Louboutin shoes were highly distinguishable from other brands and that customers recognised the shoes as originating from Louboutin.
Louboutin has the option to appeal the decision to Switzerland's highest Federal Court.in: News, Trade Marks