In its judgment of 22 June 2011, the Court of Appeal of Paris has reminded that the rule is the same for everyone and that the notoriety of a sign does not allow it to evade the basic rules concerning the right of brands.

The company Louboutin, famous brand shoes with red soles, felt able to assign the company Zara for infringement of its French semi-figurative trademark, registered in 2000 (No. 00 3067674), "representative of a shoe sole red "as well as unfair competition.

Conventionally, the company Zara had raised before the trial judges the invalidity of the mark Louboutin for lack of distinctiveness. These were not convinced by this argument.

The Court of Appeal of Paris, by contrast, was more susceptible to the company Zara since canceled the semi-figurative trademark Louboutin.

This judgment gives us an opportunity to recall some basic principles regarding the filing and trademark registration.

Article L.711-1 of the Code of intellectual property, defines the brand as "a sign capable of graphic representation which serves to distinguish the goods or services of any person or entity."

The brand has indeed essential function of guaranteeing to consumers the origin of the product or service that it designates, that is to say the company from which it came.

Thus, the registration is denied or if it was accepted, the mark may be canceled, if the registered mark has no distinctive character, that is to say that it is not capable in itself to designate the goods or services of the company.

It is this principle that reminds the Court of Appeal in clear terms with certainly some severity: "Whereas neither the shape nor the color of the sign filed are defined with sufficient clarity, precision, and accuracy to be such as to confer distinctive character unique to identify the origin of a shoe. "

This position seems harsh, because who does not associate those red soles Louboutin at home? Person! Not even the Court expressly recognized that "even if the application of this concept usually used to assign to Mr. Louboutin creating sophisticated women's shoes fitted with red soles."

However, the registered sign alone allows it as much? For the Court, and it seems ok, not at all. Neither the shape nor the color of the sign are identifiable registered with sufficient clarity. It is not possible to accurately identify what is the sign used to identify products and services.

It should be noted that in case the company Louboutin, aware of the weaknesses of its brand to make a new deposit this time to a three indicating the Pantone code.

It is therefore essential, when you register, to use an accurate graphical representation of the sign that identifies what it refers. We must be able, at first glance, be able to determine what it represents without having to refer to the descriptions because these are not taken into account in defining the scope of protection, only the sign account .

So beware of how to conduct your trademark ... This case is proof that even the greatest are sometimes trapped.

Gregory DELFOSSE, Student-Attorney and Nicole Bondois, Partner