Possibly one of the most discussed trade marks in the world of fashion and the subject of a number of referrals and decisions, the Christian Louboutin red sole trade mark is once again the subject of a legal dispute. Yesterday, the courts handed down a significant ruling, in what has been a long-standing legal battle between the famed Parisian fashion designer and the Dutch shoe maker Van Haren. The latest opinion of the Advocate General at the Court of Justice of the European Union (CJEU) can be read as a significant loss for the fashion designer in his attempt, to protect his trade mark in the Pantone colour red on high-heeled shoes.
The red shoe sole discussion has been ongoing since 2012 when Dutch shoe maker Van Haren also released its own shoe with a red sole. Louboutin later sued the Dutch shoe maker for trade mark infringement. The case reached the Court of Justice of the European Union after Van Haren appealed against a 2013 Dutch court ruling that it should stop manufacturing and selling black and blue shoes with red soles. On 21 March 2016, the Rechtbank Den Haag (District Court of The Hague) referred the following question to the Court of Justice for a preliminary ruling to determine 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?’
The question on referral was of significant importance because if Louboutin's trade mark is to be viewed as a shape mark, as opposed to a colour mark, the grounds for refusal set out in Article 3(1)(e)(iii) would be applicable, rendering Louboutin's trade mark invalid.
In yesterday’s court ruling (June 22nd 2017), delivered by Maciej Szpunar, an advocate general of the Court of Justice of the European Union, it was essentially held that the French designer red sole shoe could not be granted trade mark protection. The AG put forward that "the mark at issue is better conceptualised as a mark consisting of the shape of the goods and seeking to protect a certain colour in relation to that shape."
And confirmed "that the presence of a colour applied to an element of the surface of the goods can be regarded as a characteristic reflected in the shape of the goods [noting that] colour can be an essential practical characteristic of certain goods, such that the monopolisation of colour, in relation to an element of the shape of the goods, would remove the freedom of competitors to offer goods incorporating the same functionality."
From a contextual perspective, the courts supported their approach with reference to the adoption of Directive 2015/2436, Article 4(1)(e) of which refers to ‘the shape, or another characteristic [of the goods].’ Stating that with “regards signs consisting of the shape and colour of the goods, which may be registered under both the old and the new regime, the addition of the reference to ‘another characteristic [of the goods]’ can be interpreted in two ways: it can be understood as changing the law applicable to such signs, or simply as clarifying it.”
Concluding, the courts “consider that Article 3(1)(e) of Directive 2008/95 does potentially apply to signs consisting of the shape of the goods which seek protection for a certain colour.” Thus, If the referring court follow the AG recent decision and conclude “that the mark at issue should be regarded as sign of that type, combining colour and shape, the mark would potentially be caught by the prohibition contained in Article 3(1)(e)(iii) of Directive 2008/95."
Accordingly, as a result of this latest opinion, (if accepted by the CJEU) it seems likely that the Dutch courts, will subject Louboutin's Mark to the functional analysis provided for by Article 3(1)(e) of Directive 2008/95, as is the requirement for all shape marks, meaning that it is highly likely that Louboutin's TM will be deemed invalid.
This is an interesting and we feel controversial decision from the AG especially seeing that the mark related to protection for the Pantone colour red, for use on the sole of high-heeled shoes, (as seen in the picture above), and did not relate to the shape of a shoe per se. However, according to the opinion of the Court of Justice of the European Union’s Advocate General: “the contested mark having been registered as a figurative mark does not prevent it being classified as a 'mark consisting of the shape of the goods’ and for the purposes of analysis for the referral," the AG opined that: “the mark at issue is better conceptualised as a mark consisting of the shape of the goods and seeking to protect a certain colour in relation to that shape.”
Essentially this can be seen as a win for Van Haren Shoe chain against the famous fashion designer. The rationale of this, seems to be in part, to prevent the monopolisation of the colour red and in order to keep the colour red in the public domain.
Without a doubt, the advocate general of the Court of Justice of the European Union (CJEU) finding that the colour of an object can be considered part of it shape could be far reaching not only for brands, but for the future of TM law. Thursday’s opinion was a preliminary ruling (and is not usually binding), so we can expect a final ruling from the CJEU on the matter. However, we must be reminded that the AG opinions do carry weight, the purpose of which, in this case has been necessary in order to determine whether the Louboutin trade mark is valid.
If the CJEU follows the opinion, the outcome will affect the position of Louboutin’s distinctive red-soled shoes trade mark registration in Benelux, a three-county region including Belgium, the Netherlands and Luxembourg, in Western Europe. When the CJEU give their final ruling, the case will head back to the Dutch courts to decide, where we see Louboutin’s trade mark application being rejected on the above grounds.
In some way, this may have a chilling effect on brand owners seeking to rely on the the concept of acquired distinctiveness through use. However, the courts in concluding clearly mentioned that "On the other hand, the application of the provision is not justified where the advantage does not result from the intrinsic characteristics of the shape, but from the reputation of the mark or its proprietor. Indeed, the possibility of acquiring such a reputation is an important aspect of the system of competition which trade mark law helps to maintain," which indicates that the Louboutin trade mark might still be safe. Either way things are still unclear - so we still have to await further clarification from the courts.
The case, Christian Louboutin SAS v Van Haren Schoenen BV (Case C-163/16) can be found here.
This article was updated on the 25/06/17 to remove a few grammatical errors found, and text that effected the accuracy of the view of FLB in this case. This has been amended for clarity.