Shapes and colours – worth trying to protect as trade marks?

Louboutin faces further setback in its ongoing battle of its red sole trade mark. 

The iconic red sole of Louboutin high heels, faces further controversy following the most recent development from the European Court of Justice (ECJ). It also casts further doubt on the chances of achieving trade mark protection for shapes of products or colours as applied to products.

Christian Louboutin holds a Benelux trade mark in class 25 of the Nice Classification for “shoes (other than orthopaedic ones)” consisting the colour red (Pantone 18 1663TP) as applied to the sole of a shoe.

The dispute began in 2012, when shoe retailer Van Haren marketed a new range of high heels, some of which possessed red soles. Louboutin alleged infringement of its Benelux registration and successfully obtained a temporary injunction against Van Haren from the District Court of The Hague. The injunction prevented Van Haren from marketing its red soled shoes. Van Haren appealed the decision, resulting in the case being referred to the ECJ for a preliminary ruling in 2014.

Van Haren contested the validity of Louboutin’s mark on the basis that EU law precludes registration of signs that consist exclusively of “the shape which gives substantial value to the goods“. The issue in contention is whether the term “shape” includes colour. If this is the case, then Louboutin’s mark falls within the scope of the preclusion and thus is susceptible to invalidation.

On 6 February 2018 (according to Press Release No 11/18), AG Maciej Szpunar confirming his first opinion, stated that Louboutin’s mark may indeed constitute a shape, as opposed to consisting merely of a colour placed on a particular area of the goods in question. This was because the shape was not wholly abstract but always used in relation to the shape of a shoe sole. AG Szpunar went further to express reservations in respect of the colour marks ability to perform its essential function (to denote origin) when used out of context i.e. when used independently from soles of shoes.

AG Szpunar did reiterate that his “analysis relates exclusively to the intrinsic value of the shape, and must take no account of attractiveness of the goods flowing from the reputation of the mark or its proprietor.”

Whilst, this is not the end of the story, as the ECJ still needs to come to a final decision, which may or may not take into account AG Szpunar opinion, it is certainly setback for Louboutin. The larger ECJ panel will consider this case in the coming months.


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