It’s those red soles again… timeless and now also “shapeless”

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Following our recent article considering Advocate General Szpunar’s (the “AG”) second opinion in respect of the long running battle between Christian Louboutin (“Louboutin”) and Van Haren Schoenen (“Van Haren”), the CJEU has now issued its decision regarding the validity of Louboutin’s trade mark.

In a nutshell, it was a win for Louboutin and the famous red soles live on.

The CJEU held that the exclusion that prevents marks consisting exclusively of a shape which gives substantial value to the goods does not apply to Louboutin’s trade mark for its red soles and the trade mark is therefore valid.

It would obviously have been a huge blow to the Louboutin brand if the CJEU’s decision had gone the other way and its trade mark was declared invalid.

Background

Louboutin has been famous for selling high-heels with a red outer sole for many years now. Louboutin registered a Benelux trade mark for “footwear” in 2010 and for “high-heeled shoes” in 2013, described as consisting “of the colour red (Pantone 18 1663TP) applied to the sole of a shoe as shown (the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark)”. A copy of the trade mark is below:

Louboutin issued trade mark infringement proceedings in the Netherlands against Van Haren in 2012 as a result of it selling high-heels with red soles. Van Haren counterclaimed challenging the validity of the trade mark. As those with an interest in the area will know, Louboutin filed similar proceedings against Yves Saint Laurent in 2011 which ultimately resulted in Louboutin’s trade mark being found valid but its scope limited so as not to include high-heels which are red all over (rather than just the sole).

As for the ongoing proceedings in the Netherlands, the District Court of the Hague referred a number of questions to the CJEU. The questions principally concern the interpretation of the prohibition against registration of marks consisting exclusively of a shape that gives substantial value (Article 3(1)(e)(iii) of Directive 2008/95) and in particular, whether it “should be interpreted as meaning that a sign consisting of a colour applied to the sole of a high-heeled shoe… consists exclusively or a ‘shape’”.

The CJEU’s Decision

Contrary to the views of the AG and the position the District Court of the Hague appeared to be adopting, the CJEU held that “a sign consisting of a colour applied to the sole of a high-heeled shoe… does not consist exclusively of a ‘shape’”.

The significance of which is that Van Haren’s invalidity counterclaim is greatly undermined, although it will be for the District Court of the Hague to now apply the law as clarified by the CJEU.

Rationale of the CJEU

In the absence of the Directive providing a definition for “shape”, the CJEU held that its meaning must be the meaning it is given in everyday language and taking into account the context and the purpose of the prohibition. The CJEU referred to the fact that in the context of trade mark law, as noted by the European Commission, “the concept of ‘shape’ is usually understood as a set of lines or contours that outline the product concerned”.

The CJEU considered that neither the Directive, the previous case-law or the usual meaning of the concept suggested “that a colour per se, without an outline, may constitute a ‘shape’”.

The CJEU then had to consider whether a colour applied to a specific part of a product could be a shape if the specific part of the product created an outline (which may then define the shape).

The CJEU held that it could not in circumstances where the trade mark did not seek to protect a shape “but solely to protect the application of a colour to a specific part of that product”. Indeed, the CJEU noted that the trade mark expressly stated that: “the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark”.

Notwithstanding the above analysis, the CJEU also noted the more straightforward fact that the “main element” of the trade mark was the colour red. Consequently, the trade mark could not be regarded as consisting “exclusively” of a shape as its main element was a colour.

What is the significance of the decision to brand owners?

The CJEU has given the green light to the registration of colour for marks.
Care should be taken to limit the trade mark application to a designated colour (including a pantone reference) and expressly exclude reference to the shape. For example, if a designer of baseball caps’ signature was to always use purple bottomed peaks, and they decided to trade mark that signature feature, the application should state: “baseball caps of the colour purple (Pantone 2088 C) applied to the underside of the baseball cap’s peak as shown (the contour of the peak is not part of the trade mark but is intended to show the positioning of the mark)”.
Although it may be difficult to do so, this decision demonstrates that it is not impossible to enforce colour marks where there is continued use of the mark (as was the case for those famous red soles).