On 12 June 2018, the Court of Justice of the European Union (CJEU) ruled that Christian Louboutin’s red sole trademark was valid (Case C-163/16). The decision comes after years of litigation between Louboutin and Dutch footwear company Van Haren over the scope and validity of Louboutin’s trademark.
The Facts of the Case
Christian Louboutin is a French fashion and shoe designer who is best known for his signature red-soled high heels. In 2010, the designer was granted a Benelux trademark for ‘the colour red (Pantone 18‑1663TP) applied to the sole of a shoe […] (the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark)’. In 2013, the registration was amended to only cover high-heeled shoes.
In 2012, Dutch shoe retailer Van Haren started to sell high-heeled women’s shoes with red soles. Christian Louboutin initiated trademark infringement proceedings before the District Court, The Hague, Netherlands, and succeeded in the initial proceeding. Van Haren then challenged the validity of Louboutin’s red sole trademark under Article 3(1)(e)(iii) of Directive 2008/95/EC, which prevents registration of any sign which consists ‘exclusively of […] the shape which gives substantial value to the goods’. Van Haren argued that the mark at issue was ‘a two-dimensional figurative mark that consists of a red coloured surface’.
The Hague District Court was unsure about the notion of the term ‘shape’ and asked the CJEU whether the concept of ‘shape’ is limited to three-dimensional properties of the goods, such as their contours, measurements and volume, or whether it includes non-three-dimensional properties of the goods, such as their colour.
In an additional opinion delivered on 6 February 2018, CJEU Advocate General Maciej Szpunar maintained that he was inclined ‘to classify the mark at issue as a sign consisting of the shape of the goods’ because ‘the shape of the sole matches the spatial delimitation of the colour red’. The CJEU, however, did not follow the opinion of AG Szpunar and confirmed the validity of Louboutin’s red sole trademark.
The Court concluded that where the main element of a sign is a specific colour designated by an internationally recognised identification code, that sign cannot be regarded as consisting ‘exclusively’ of a shape. Louboutin’s trademark description expressly excluded the contour of the sole from trademark protection. Article 3(1)(e)(iii) of Directive 2008/95 must therefore be interpreted as meaning that the sign in question did not consist exclusively of a ‘shape’, within the meaning of that provision.
As the CJEU’s ruling concerns Directive 2008/95/EC, which has since been replaced by Directive 2015/2436, its impact is somewhat unclear. The old version of Article 3(1)(e)(iii) included the wording ‘the shape which gives substantial value to the goods’, whereas the new law was amended to add ‘or another characteristic’ after the word ‘shape’.
This article was originally published on AllAboutIP – Mayer Brown’s blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.