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Louboutin’s infamous red sole trade mark not considered to fall within the shape exclusions for trade mark protection

28th Jun 2018

As we reported earlier this year, the luxury footwear designer, Louboutin, has been facing an invalidity action by Dutch shoe retailer, Van Haren, in relation to the Benelux trade mark registration of the image shown above, which consists of a red sole on the outline of a high-heeled shoe. The registration has the following description of the mark alongside the image: “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)”.

Van Haren sought invalidity for this trade mark registration on the grounds that “a two-dimensional mark, more specifically the colour red which, when applied to the soles of shoes, conforms to the shape of the shoes and gives them substantial value” (Para 16 – Case C‑163/16) and therefore falls foul of Article 3(1)(e)(iii) of Directive 2008/95 that prohibits signs that consist exclusively of shapes which give substantial value to the goods from obtaining trade mark protection.

The question therefore for the CJEU to address was whether “the notion of ‘shape’ within the meaning of Article 3(1)(e)(iii) of Directive 2008/95 …is limited to the three-dimensional properties of the goods, such as their contours, measurements and volume (expressed three-dimensionally), or does it include other (non three-dimensional) properties of the goods, such as their colour?” (Para 18 – Case C‑163/16).

AG Szpunar gave two rounds of opinions in which he ultimately concluded that the contested mark was a mark consisting of a shape seeking to protect the colour and this could potentially fall within the exclusion of Article 3(1)(e).

On 12 June 2018, the CJEU issued their decision.

A breakdown of the CJEU’s decision is summarised below:

There is no definition of the concept of the term “shape” in Directive 2008/95 and therefore, the definition must be considered in its “usual meaning in everyday language, while also taking into account the context in which it occurs and the purposes of the rules of which it is part” (Para 20 – Case C-163/16 – Grand Chamber)

“It does not follow from Directive 2008/95, the case-law of the court, or the usual meaning of that concept that a colour per se, without an outline, may constitute a shape”. (Para 22 – Case C-163/16 – Grand Chamber)

While it is true that the shape of the product or of a part of the product plays a role in creating the outline for the colour, it cannot, however, be held that a sign consists of that shape in the case where the registration of the mark did not seek to protect that shape but sought solely to protect the application of a colour to a specific part of that product“. (Para 24 – Case C-163-16 – Grand Chamber)

“The mark does not relate to a specific shape of sole for high-heeled shoes since the description of the mark explicitly states that the contour of the shoe does not form part of the mark and is intended purely to show the positioning of the red colour covered by the registration”. (Para 25 – Case C-163-16 – Grand Chamber)

Therefore, the sign at issue cannot be considered to consist exclusively of a “shape”, meaning that it would not fall foul of the shape exclusions for trade mark protection under Article 3 Directive 2008/95.

This decision highlights the importance of providing a description when it comes to seeking trade mark protection for position marks, specifying that the contour of the article does not form part of the mark. Not providing a description to this effect could be suggestive that the shape is intended to form part of the mark and therefore, may potentially render any registration you can secure of your mark invalid.

The case will now be referred back to the District Court in the Hague, where the proceedings were initiated, for a final decision.

Hannah Burrows
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Would you like to know more? You can talk to Hannah Burrows who will be able to help. Call (0)20 7242 0901


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