On the 12th of June 2018, the Court of Justice of the European Union (CJEU) rendered a judgement in the case between the famous French shoemaker Christian Louboutin and a Dutch company Van Haren, which sold red-soled shoes.

The case arose from a preliminary question asked by the Rechtbank Den Haag (District Court, The Hague, Netherland): can a combination of a colour and a location on a shoe be registered as a trademark? The CJEU answered that it could.

Let us underline that under Article 2 Directive 2008/95 : “A trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings”. Thus, the term trademark has a broad scope.

Mathias Avocats reviews the various stages of the case and underlines the potential impact the decision may have.

What are the facts?

In the case at hand, the Van Haren company marketed high heel shoes with a red sole in the Netherlands. It must be underlined that the company Louboutin has marketed the same type of shoes for over 50 years. Therefore, Mr. Christian Louboutin and his company of the same name went to court on the 27th of May 2013, for infringement of the brand’s trademark.

Indeed, the latter had registered his trademark under the Benelux Convention on Intellectual Property to protect itself from competition. The trademark is described as “the colour red (Pantone 18-1663TP) applied to the sole of high-heeled shoes as shown (the contour of the shoe is not part of the trademark but is intended to show the positioning of the mark)”.

Before the Dutch Court, the French man argued that the Van Haren company had infringed his trademark and the Court sided with him. The defendant accordingly appealed the decision to the Rechtbank Den Haag claiming that the mark was invalid on the basis of Article 2.1(2) of the Benelux Convention. The latter states that “signs consisting solely 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 trademarks”.

What is the preliminary question asked in front of the CJEU?

The Rechtbank Den Haag considered that the colour affixed to the sole is a component of the product. The colour red affixed to the sole of Louboutin’s high heel shoes is thus a component of said shoes. The court however raised the question whether the exception provided for in Article 3(1)(e)(iii) of Directive 2008/95 applies to that mark. It therefore raises a preliminary question of the interpretation of this Directive to the CJEU: is the notion of “form” in this Article “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”?

What is the CJEU’s decision and its reasoning?

The CJEU ruled against the opinion of its Advocate General and considered that the Directive does not define the notion of “form”. It is therefore necessary to establish the meaning of this term in accordance with its usual meaning in everyday language.

The judges note that it does not appear from the usual meaning of this term, nor from the CJEU’s case law nor from the Directive 2008/95, that a colour, per se, without delimitation in space, could constitute a shape. It thus appears that a colour, considered in itself, cannot benefit from trademark protection.

However, if the determined colour is applied to a specific area of the shoe, does that mean that the sign in question consists of a “shape”, within the meaning of Article 3 of the Directive?

Furthermore, if the shape of the product or a part of it plays a role in creating an 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.”

The court holds that the disputed mark does not relate to a specific shape of sole of high-heeled shoes. The description of that mark expressly indicates that the outline of the footwear is not part of Louboutin’s mark but applies only as to the location of the red colour targeted by the registration.

It states, “that a sign such as that at issue in the main proceedings, cannot be regarded as consisting exclusively of shape, where, as in the present instance, the main element of that sign is a specific colour designated by an internationally recognized identification code”.

The Court held that Louboutin was not seeking to protect a shape of a specific shoe, but merely the application of a colour to as specific part of it. Therefore, the Court ruled in favour of the French shoe-stylist.

It should be noted, that the CJEU is not responsible for settling disputes in which the questions submitted to it have been raised. It will be for the Dutch Court to rule in the light of the judgement of the CJEU.

What will be the potential impact of this decision?

Thus, the combination of a colour and a location on a shoe can be registered as a mark. Louboutin is then the only one able to apply the colour 18.1663TP Pantone colour chart under his shoes.

It’s not the first time Christian Louboutin’s red sole trademark has led to legal battles across the globe; in France and abroad. For example, in mid-May, the Court of Appeal of Paris had already recognized the exclusive nature of these red soles.

For any advice, regarding your patents or trademark registration, Mathias Avocats remains at your disposal to assist you in your procedures.