Attorneys for Yves Saint Laurent Inc. fired back Tuesday at Christian Louboutin SA’s motion for a preliminary injunction in the contentious legal battle over whether YSL infringed on Louboutin’s red sole mark.
Louboutin originally filed a complaint in April against YSL when the rival fashion house launched its Cruise 2011 collection of monochromatic shoes. At issue is a red pump with a red sole, which Louboutin claims infringes upon the red-sole trademark it obtained in 2008.
Next Friday the plaintiff will look for preliminary injunctive relief from the New York’s Southern District, but according to YSL, Louboutin can’t show irreparable harm or consumer confusion, which is important in obtaining the injunction.
The defendant claims to have sold numerous shoes in the past with red outsoles which have neither tarnished Louboutin’s sales nor confused its consumers. While YSL has filed its own counterclaims questioning the validity of Louboutin’s red sole mark, next week’s hearing will concern whether or not stores can continue to sell YSL’s red pump.
“Louboutin’s trademark should have never been granted,” David Bernstein, attorney for YSL, told WWD Wednesday. “We just don’t think that any fashion designer should be able to monopolize any color.”
According to court papers filed by Bernstein’s firm, Debevoise & Plimpton LLP, if the court grants the injunction, “the harm to YSL and disservice to the public interest…are palpable.” The defendant would “be prevented from giving life to its own venerated style traditions,” YSL said.
Louboutin’s attorney Harley Lewin, of McCarter & English LLP, disagreed.
Calling YSL’s argument that having an all-red shoe negates the red sole mark “utter rubbish,” Lewin said that, “unless you are living in a cave,” the consumer most definitely recognizes a red-soled shoe as a Louboutin.
“We are not claiming to own every red under the sun. There’s a particular red that Christian uses on his shoes, a bright, lacquered red,” he said. “We aren’t saying burgundy or orange-red, we aren’t saying pink. We don’t own any other red but that red.”
And the red used by YSL? “You can’t tell the difference between the two [reds],” he said. “They are damn close.”