The Protection of the Red Sole – A Landmark Decision in Trademark Law

The Protection of the Red Sole – A Landmark Decision in Trademark Law

In one of the most awaited decisions in Intellectual Property, the 13th Federal Court of Rio de Janeiro, on November 18, recognized the protection and distinctiveness of Christian Louboutin’s Red Sole, nullifying the BPTO’s administrative act that had denied registration application no. 901.514.225 for a position mark.

This ruling represents a milestone in Intellectual Property law, especially in the field of trademarks, highlighting the importance of distinctiveness and the protection of unique brand elements.

In 2023, the French fashion house sought judicial review to contest the BPTO’s decision, which denied registration for the position mark on the grounds of alleged lack of distinctiveness, as stated in item 5.13.2 of the BPTO’s Trademark Manual. At the time, Louboutin obtained a preliminary injunction suspending the BPTO’s decision.

Federal Judge Márcia Maria Nunes de Barros, in granting the injunction, stated:

“In a preliminary and non-exhaustive review, I find plausibility in the plaintiff’s argument regarding the potential distinctiveness of registration no. 901.514.225. It is publicly known that the red sole of high-heeled women’s shoes has been widely used by renowned designer Christian Louboutin as a visual identifier of his products. This feature is widely recognized not only by luxury consumers but also by those interested in fashion law, accessories, and celebrity culture. Given the potential harm to the plaintiff resulting from the administrative denial, I grant the request for an injunction.”

At the heart of this case is the iconic Red Sole, consistently used on all Christian Louboutin shoes since 1992 as a hallmark of uniqueness, identity, exclusivity, and sophistication.

Position marks distinguish products by the placement of a distinctive sign in a specific location, allowing market differentiation. They were officially recognized as registrable in Brazil by INPI Ordinance No. 37/2021. However, practical implementation revealed gaps that were later addressed by Ordinance No. 08/2022, which clarified analysis criteria, technical requirements, and examination procedures, aligning Brazil with international standards for position marks.

The 2022 ordinance emphasized that a position mark must feature a distinctive sign in a specific product position, which contributes to its recognition as originating from a particular source. The sign cannot be merely functional or ornamental, and its distinctiveness must be either intrinsic or acquired through extensive use.

In its recent decision, the court recognized that Louboutin’s Red Sole had acquired distinctiveness through extensive use and consumer recognition, consistent with trademark principles protecting distinctive product features.

A central trademark law concept that supported the decision was secondary meaning, or acquired distinctiveness. This phenomenon occurs when a name, term, or sign, initially generic and commonly understood by society, gains distinctiveness through continuous and extensive use associated with a specific product or service. Throughout the proceedings initiated by the French brand, it was demonstrated that the secondary meaning phenomenon developed over time, conferring increased distinctiveness to the mark. This distinctiveness must be assessed from the perspective of the target audience, which should recognize the sign in question as a trademark of a specific company rather than a merely generic term.

The ruling stated:

“The fame and reputation of Louboutin shoes have led consumers to associate the red sole with the product itself, not just a color, thereby establishing acquired distinctiveness (secondary meaning).”

This finding was supported by over 50 international judicial and administrative decisions confirming the registrability of the Red Sole, along with market surveys demonstrating that 95.4% of surveyed consumers recognized Louboutin’s Red Sole as a distinctive position mark.

The court’s analysis was also based on evidence demonstrating that the “Red Sole” has become synonymous with the Louboutin brand in the minds of consumers. Market research was crucial in establishing this association.

In this regard, the market research results successfully demonstrated that:

(i) the mark has an undeniable ability to identify and differentiate the plaintiff from competitors in the market, and
(ii) even the target consumer (unfamiliar with trademark law) recognizes the specific Pantone red sole on Louboutin high-heeled shoes as a position mark in favor of the plaintiff, meeting all the requirements for validity.

Furthermore, under the concept of a position mark outlined in the Trademark Manual (INPI, 2022), 95.4% of surveyed female consumers considered the red sole on Louboutin high-heeled shoes to be a position mark.

Today, we already see some important decisions on the application of the “secondary meaning” theory in Brazil, such as the following ruling by the Second Regional Federal Court (TRF-2):

INDUSTRIAL PROPERTY. APPEAL AGAINST A CIVIL RULING. TRADEMARK INVALIDITY. POSSIBILITY OF CONFUSION. SECONDARY MEANING. DILUTION THEORY.
I – Although the terms registered by the plaintiff (“CHINA” and “IN BOX”) are common and evocative of the product (“Chinese food in a box”), it cannot be overlooked that these combined terms are now directly associated with the service of Chinese food served in a box, first offered by the plaintiff. This reflects the occurrence of secondary meaning.
II – By adopting the term “IN BOX” in its registration (“ASIA IN BOX”), the defendant sought to benefit from the reputation achieved by the plaintiff’s business, which has been operating in the food industry for years, attempting, in a way, to associate its products with those offered by “CHINA IN BOX.”
III – Allowing the plaintiff’s trademark (“CHINA IN BOX”) to coexist with the defendant’s trademark (“ASIA IN BOX”), while using the concept established by the plaintiff of “Chinese food in a box,” ultimately dilutes the distinctiveness of the copied sign.
IV – The similarity between the signs “CHINA IN BOX” and “ASIA IN BOX” may lead to market confusion, as consumers might believe that “ASIA IN BOX” is an extension of “CHINA IN BOX,” intended to offer differentiated food items, thus leading them to assume they are purchasing the well-known product/service.
V – Appeal granted.
(TRF-2 – EIAC: 05236186420084025101 RJ 0523618-64.2008.4.02.5101, Rapporteur: MARCELO PEREIRA DA SILVA, Judgment Date: 24/10/2013, 1st Specialized Section, Publication Date: 30/10/2013)

The STJ (Superior Court of Justice) has also highlighted such peculiarities when illustrating what constitutes a graphic-visual element with notoriety and distinctiveness and, therefore, eligible for trademark protection. Consider, for example, the reasoning provided by Justice Nancy Andrighi in Special Appeal No. 1.677.787/SC:

“(…) Although the primary distinguishing elements used for identifying products and services are the business name and the trademark, it is well established that their market identity can also arise from intrinsic characteristics, comprising graphic-visual elements developed specifically to distinguish them from competitors. Notable examples include the Coca-Cola bottle, Toblerone chocolate, and the red sole of Louboutin shoes. Thus, it is common for consumer identification of certain products to result from their visual perception, which elevates the related trademark to a status with secondary distinguishing potential.”
(STJ. REsp nº 1.677.787/SC. Third Panel. Justice Nancy Andrighi. Judgment Date: 26/09/2017)

Doctrine further clarifies:

“The legislator does not specifically address the phenomenon of acquiring distinctiveness through use. This concept, contrary to common belief, is not exclusive to American law, which coined the term ‘secondary meaning.’ Even though specific Brazilian law does not explicitly define it as a legal figure, it holds juridical status under Article 6quinquies C(I) of the Paris Convention, which integrates the Brazilian legal system. Therefore, administrative and judicial bodies have the duty to consider it when analyzing the possibility of registration.”
(IDS – Comments on the Industrial Property Law, 3rd Edition, Renovar Publishing, 2013, p. 239)

A central aspect of the decision was its focus on non-traditional trademarks. The judgment reaffirmed that colors, when applied in a specific and consistent manner, can serve as trademarks, provided they meet the distinctiveness requirements: “It is clear that, for Brazilian consumers, this color on the soles of high-heeled women’s shoes represents a distinctive mark—even if this perception was acquired due to the product’s fame in the fashion market.”

The decision also carefully balanced trademark protection with the principles of competition law, extending protection to all Red Soles, not just those on high heels:
“(…) Although the mark in question became known for high-heeled women’s shoes, it is natural for the plaintiff to use it for similar products within the footwear segment; as evidenced on Louboutin’s official website, the red sole is also applied to low-heeled or flat shoes, as well as boots and men’s footwear. I emphasize that the position mark protects the sign (red sole), with its depiction on a high-heeled women’s shoe serving as one possible application of the mark, not as an exclusive limitation to this type of footwear.”

The ruling reinforces the protection of elements integral to a brand’s identity. For intellectual property rights holders, it serves as a precedent for safeguarding unique aspects of their products, enhancing market positioning and consumer trust.

Additionally, the Louboutin case contributes to global jurisprudence on color and position trademarks, fostering harmonization and predictability in trademark law.

This groundbreaking decision recognizes the distinctiveness of Louboutin’s position mark in Brazil, guaranteeing exclusivity over the “Red Sole.” Beyond protecting the brand’s rights, it establishes that aesthetic elements can be registered as trademarks in specific contexts, providing security to the fashion industry by safeguarding the unconventional use of colors as source identifiers, provided secondary meaning is demonstrated.

The decision is subject to appeal and mandatory review by the Second Regional Federal Court (TRF-2), as stipulated in Article 496 of the Code of Civil Procedure.