Karlo Tinoco and Rob Rodrigues of Licks Attorneys writes about how Christian Louboutin won an infringement action concerning its red shoe shoes without registered IP rights.

As many companies in the fashion industry, Christian Louboutin did not seek design protection for all its shoes designs in Brazil. The red sole trademark application was filed in 2009 in Brazil, a time when position trademarks were not regulated by the Brazilian trademark law in the country. The BRPTO regulation on position trademarks only came into effect on October 1, 2021, and Christian Louboutin’s trademark application is still pending.

The absence of registration of the red sole and designs of Christian Louboutin’s shoes in Brazil might have created an expectation among local designers that the iconic French designer creations could be misappropriated. That was the case dealt with by the Appellate Court of Sao Paulo, where a Brazilian shoe company marketed online red sole shoes inspired by Christian Louboutin’s creations.

Without a trademark and design registration, Christian Louboutin filed a lawsuit based on trade dress and copyright infringement against a local company, also arguing the notoriety of the red sole. In its defense, the Brazilian company argued that Christian Louboutin has no rights in Brazil and that the apposition of its own trademark on the shoes would be enough to avoid any confusion on the consumers.

After a favorable preliminary injunction decision by the Sao Paulo trial court, an interlocutory appeal was filed based on the absence of IP rights covering the red sole shoes.

On March 22, the Appellate Court of Sao Paulo sided with Christian Louboutin, taking into consideration two main factors: the notoriety of the red sole and the trade dress of Christian Louboutin.

Besides the trademark grounds, the Appellate Court decision was strongly grounded in the protection of Christian Louboutin’s uniqueness and trade dress. The Appellate Court also reinforced that although the main distinctive signs used to identify products and services are the company name and the brand, it is known that their position in the market can also come from an identity that is intrinsic to the products, composed of graphic-visual elements developed precisely for the purpose of distinguishing them from their competitors.

The judges concluded that in a specialized market such as fashion, there are traits employed by different designers in their works that, over time, become synonymous with the brand itself, such as fabric cuts, use of styles, and, in Christian Louboutin’s case, the red soles of the shoes.

Another relevant aspect of the decision for the IP community is the contribution to consolidating the case law admitting the infringement of trade dress even when all the elements of the trade dress are not used by the infringer.

By confirming the preliminary injunction granted by the trial judge on the grounds above, the Appellate Court of Sao Paulo commits to the protection of creations in the fashion industry against misappropriation even without a patent design or trademark registration.


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