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8 August 2018

Issue Sole-ved?

Christian Louboutin SAS has scored a significant victory at the CJEU in its battle to have its red sole trade mark recognised as valid. The mark had been the subject of a challenge under Article 3(1)(e)(iii) of the 2008 Trade Mark Directive, i.e. the absolute ground for refusal concerning signs consisting exclusively of “the shape which gives substantial value to the goods”. However, the CJEU has now determined that the mark does not fall foul of this provision since it is, in effect, a position mark rather than a shape mark.

The CJEU judgment was made in the context of trade mark infringement proceedings brought by Louboutin against rival shoemakers Van Haren.  Van Haren sold red soled women’s shoes in the Netherlands in 2012 and Louboutin claim that this amounts to infringement of the Benelux trade mark registration depicted below.  Importantly, the mark description reads as follows: “The mark consists of the colour red (Pantone 18-1663 TP) 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)”.

Louboutin’s infringement claim was upheld in part by the District Court in The Hague and Van Haren counter-attacked by claiming that Louboutin’s registration should be declared invalid.  The Dutch Court was unsure whether the concept of a ‘shape’ should be limited solely to three-dimensional properties and so sought guidance on this issue from the CJEU.

The CJEU has now determined that although the shape of the sole plays a role in creating an outline for the colour, the mark is seeking to protect the application of a colour to a specific part of the shoe and not the shape of the shoe/sole itself (the image that appears in the mark is merely to illustrate the position of the trade mark).

The CJEU also pointed out that (i) the description of the mark makes it clear that the contour of the shoe does not form part of the mark and that (ii) the main element of the mark is the specific colour as designated by the Pantone reference.

For these reasons, the CJEU determined that the mark cannot be said to consist exclusively of the shape of the sole/shoe which gives substantial value to the goods.

Although this is not quite the end of the matter (since the original infringement case still needs to be determined by the Dutch courts) the ruling is a significant step in the right direction for Louboutin since it is likely to make it difficult for competitors to market red soled shoes without stepping on its toes.

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