In order to protect their “Red Sole Mark”, Louboutin filed an application with the US patent and trademark in March, 2007. An approval of the trademark protection was given to Louboutin in 2008 for “lacquered red sole on footwear” having the color red as the main feature. In 2011, the famous fashion company of YSL decided to release monochromatic footwear using the colors yellow, green, purple and red. This segment included the same color for the whole shoe, including the heel, insole, upper and outsole. It’s worth mentioning that YSL has been designing this type of footwear since 1970’s.
When Louboutin learned that YSL was promoting and selling this type of footwear they ordered the withdrawal of the infringing shoes from the marketplace, shortly after that Louboutin and YSL entered into negotiations to prevent litigation.
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Under the federal law and the New York state law Louboutin was claiming trademark infringement and counterfeiting , trademark weakening and unfair competition, in addition unlawful deceptive acts under the New York state law, this was so because the red YSL shoe, which included a red sole greatly resembled the Louboutin “Red Sole Mark”.
Moreover Louboutin ordered a temporary injunction preventing YSL from promoting any type of monochrome shoes in order not to cause misperception among customers.
In response, YSL counterclaimed that the “Red Sole Mark” should be canceled because, it’s ornamental and it is functional. Furthermore, YSL also filed a complaint seeking damages for unfair competition and tortious interference with business