rachel warren new25201007 1Christian Louboutin designs and produces the famous luxurious red soled high heel shoes. It prides itself on its unique design and branding. Louboutin registered their red sole trade mark in 2010. The mark consists of a specific shade of red applied to the sole of a shoe. The trade mark was illustrated in a picture of the shoe, with the red sole, but it was stated in the description that the contour of the shoe (i.e. the shape) did not form part of the trade mark. Rachel Warren looks into the proceedings and ruling.

Main Proceedings

During 2012, Van Haren produced and sold red soled high heels. Subsequently, Christian Louboutin initiated proceedings before the Rechtbank Den Haag (District Court, The Hague) ("the Hague"), on the basis that Van Haren had infringed their trade mark.

Van Haren argued that the trade mark was invalid because the mark was a two-dimensional figurative mark that consisted of a red coloured surface and that this plainly fell within Article 2.1(2) of the Benelux Convention which states that "signs consisting of a shape which results from the nature of the goods, which gives a substantial value to the goods or which is necessary to obtain a technical result, cannot be considered as being trade marks."

Louboutin stated that they had not attempted to register the shape of the shoe, but had merely registered the colour of the sole of the shoe, as they had specifically excluded the contour of the shoe in the description of the trade mark. This was the aspect of the shoe that gave Louboutin's their substantial value.

The Court's judgment upheld in part the claims of Christian Louboutin.

Preliminary Ruling

Nonetheless, Van Haren challenged this judgment.

The Hague referred a question to the Court of Justice for the EU ("CJEU") for a preliminary ruling. The key aspect of the case in this article is in relation to the interpretation of EU law: Article 3(1)(e)(iii) ("Article") of Directive 2008/95 ("the Directive").

It states:

"signs which consist exclusively of 'the shape which gives substantial value to the goods' cannot be registered or, if registered, may be declared invalid."

In essence, the question asked of the CJEU was whether or not a sign consisting of a colour (applied to a sole of a high-heeled shoe) consists exclusively of a 'shape' within the meaning of the Article.

The Directive gives no definition of the word "shape". Therefore, the Court has consistently held it should be interpreted in its usual everyday language, whilst also taking into account the context in which it occurred. The European Commission noted, under trade mark law, it is generally understood as a set of contours or lines.

Subsequently, the Court held it does not make sense, when interpreting the definition of 'shape', from the Directive, nor from usual interpretation or case law, that a colour would constitute a 'shape' under the Article.

However, a question arose regarding whether or not the fact that the red colour (or any colour) had been applied to a specific part of the shoe (or any product) meant that it would fall within the Article. It was held that, although the shape of the product acted as an outline for the colour, it cannot be argued that a sign consists of a shape if the registration of the mark does not intend to protect the shape, but to instead protect the colour in a specific part of a product.

As originally observed, the mark registered by Louboutin does not relate to the shape (or contour) of the shoe, but rather it was an indication as to the positioning of the red colour.

In light of the ruling, the answer to the question regarding the interpretation of the Article was that a sign consisting of a colour, applied to the sole of a high-heeled shoe, does not consist exclusively of a 'shape' within the meaning of the Article. Therefore, this exclusion under EU law regarding shape trade marks does not apply to Louboutin and the CJEU ruled that the Louboutin trade mark was valid.

Rachel Warren said: "the ruling provided by the CJEU has given Christian Louboutin's trade mark infringement claim against Van Haren a significant boost. There is a fine balance to be struck between providing trade mark owners with sufficient protection for their marks and restricting the freedom of other traders. This is why shape trade marks are so difficult to register because they potentially provide perpetual protection for what are really product designs rather than trade marks (which distinguish one undertaking's business from another). The case will now return to the Hague Court where it is likely that the Court will rule that Louboutin's trade mark is valid and infringed."

You can contact Rachel Warren (Senior Associate) on +44(0)1392 685210 or at rachel.warren@footanstey.com.

Tags: Intellectual Property2018