Trade-marks Heavy Hitter Comes Out Swinging for Christian Louboutin


By Ashlee Froese of Keyser Mason Ball LLP

Not only has Tiffany thrown in its hat into the Christian Louboutin v. Yves Saint Laurent show down, a trade-marks law international heavy hitter is also tossing its hat into the ring.  That's right: INTA has also filed an amicus brief supporting Christian Louboutin.  Now for legal fashionistas, INTA means something.  For CanadaFashionLaw's fabulous non-lawyer fashionistas, let's provide some context.  Here's a description of INTA from its own submissions:

"Founded in 1878, INTA is a not-for-profit organization dedicated to the support and advancement of trademarks and related intellectual property concepts as essential elements of trade and commerce.  INTA has over 5,700 in more than 190 countries.  Its members include trademark owners, law firms, and other professionals who regularly assist brand owners in the creation, protection and enforcement of their trademarks.  All of INTA's members share the goal of promoting an understanding of the essential role trademarks play in fostering informed decisions by consumers, effective commerce and fair competition."

CanadaFashionLaw has been a committee member of INTA for a number of years and can vouch that in the intellectual property law world, it is a highly respected and influential organization.  So, the fact that INTA is raising the stakes in this case and getting involved is worthy of a glass of pino grigio!  It's juicy.

Why is INTA getting involved? 

Straight from the branded horse's mouth:

"[INTA is] interested in the development of clear, consistent and fair principles of trademark and unfair competition law...As an independent organization dedicated to the advancement of trademark law, INTA is uniquely qualified to aid the Court in its determination of this important matter". 

Translation: it also believes that the court's decision in respect of the rejection of Christian Louboutin's request for a preliminary injunction against Yves Saint Laurent is wrong.  As wrong as neon-colored leggings!    

What's the problem?

First of all, INTA's submissions are very narrow.  It only specifically relates to the court's comments on the validity of Christian Louboutin's trade-mark registration.  INTA does not comment on the issues of trademark infringement or dilution.

Here's INTA's beef:

a) In contemplating Christian Louboutin's trademark rights, the court took an overly broad interpretation: red on fashion articles.  The real issue to consider should have centered on lacquered red on soles of footwear.

b) The court found that the trade-mark registration was invalid as the color had functional qualities, relying on the doctrine of aesthetic functionality.  INTA holds that the judge did not properly apply the correct analysis for a finding under this doctrine.  Rather than narrowing in the effect that Christian Louboutin's trade-mark registration would have on the luxury shoe industry, the court looked at the effect it would have throughout the fashion industry.

What does INTA have to say for itself?

Here's a summary of INTA's position:

a) The court appeared to start with the assumption that Christian Louboutin's trademark registration was invalid, which flies in the face of the presumption of validity when obtaining a trademark registration.

b) The court unilaterally broadened Christian Louboutin's trademark claims to encompass all shades and tones of red, rather than specifically dealing with the color at hand: lacquered red on the sole of footwear.

c) The court then construed a hypothetical situation to consider the ramifications of granting an entity a monopoly over a color, rather than analyzing the particulars of this specific scenario.

d) The court failed to recognize the substantive work provided by the US Patent and Trademarks Office in ensuring the registered trademarks are valid trademarks that are worthy of the rights conferred onto registered trademarks:

"Registration is not merely clerical, but rather the result of a substantive examination process and opportunity for interested parties to be heard."

e) The trade-mark registration granted by the US Patent and Trademarks Office was entirely consistent with established US trademarks law and, therefore, Christian Louboutin's trade-mark registration is valid and worthy of recognition.

f) The Court's discussion of Monet's use of blue in his water lily series was flawed as it was never the subject of a trade-mark and, therefore, falls entirely outside the scope of the matter at hand.

g) In determining whether the color was functional (thereby negating the trade-mark protection), the Court wrongly applied the doctrine of aesthetic functionality.  INTA provides a useful summary of the purpose of this doctrine:

"The bedrock of the doctrine is the legitimate need of competitors to use a utilitarian feature that is less expensive, of better quality, or more efficient to manufacture.  By ensuring that competitors remain free to copy useful product features, the doctrine prevents trademark law from undermining its own and the patent law's pro-competitive objectives."

h) The doctrine of aesthetic functionality is a controversial principle, which INTA has lobbied against in past amicus briefs. Not only does INTA guard against employing this doctrine, but if the Court does adopt this doctrine it should do so correctly. Overall, INTA maintains that the doctrine of aesthetic functionality has absolutely no application to this case.

In a united stand with Tiffany, INTA rounds out its submissions by stating:

"If the District Court's opinion stands uncorrected, it will have far reaching consequences for brand owners and consumers alike.  Rights granted as a result of the careful examination process of the Federal trademark registration system could be upended arbitrarily, making it easier for third parties to use the well-recognized brand of others, damaging brand owners and increasing the potential for consumer confusion."

View more from Canada Fashion Law and @BrandFashionLaw

(C) Ashlee Froese, 2011. All rights reserved.

The contents herein are for informational purposes and do not constitute legal advice. It is strongly recommended that you seek a professional legal opinion in the event of a legal dispute.

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