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The red sole has not been kicked out!

The long-awaited Louboutin judgment has finally been delivered (here).

The judgment is not only interesting on a substantive level, but also surrounded by a variety of procedural peculiarities: The oral hearing was re-opened (which happens very rarely!), and as a consequence, the Advocate General had to issue a second opinion. Lastly, the judgment was issued by the Grand Chamber.

In short, Christian Louboutin sued Van Haren Schoenen BV for trade mark infringement in the Netherlands of its Benelux trade mark shown below (for more background information, see our blog here).

On a substantive level, the case concerns a preliminary ruling on the requirements of Article 3(1)(e)(iii) of Directive 2008/95/C. This provision provides for an absolute grounds refusal for signs which consist exclusively of the shape which gives substantial value to the goods

The national (Dutch) Court wanted guidance on whether the notion “shape” of Article 3(1)(e) also included other properties such as the colour. In concrete, it asked the CJEU for a preliminary ruling on the following question:

“‘Is the notion of “shape”, within the meaning of Article 3(1)(e)(iii) of [Directive 2008/95] […], 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 trade mark in question depicted Louboutin’s famous red sole. We include the graphic representation of the mark as well as its description below:

As already anticipated in this blog (see here), the CJEU ruled in favour of Louboutin and in line with the Second Advocate General’s opinion.

The Court found that the trade mark did not fall foul of Article 3(1)(e)(iii) of Directive 2008/95/C. It reasoned this finding by stating that the notion “shape” did not include other properties of the goods, such as their colour. Applying this standard to the case at hand, the Court found that the colour red as applied to the soles of high heeled shoes did not consist ‘exclusively‘ of a shape. Rather, the Court considered that the main element of that sign was a specific colour designated by an internationally recognised identification code.

Type of mark

Interestingly enough, the CJEU did not explicitly define the type of trade mark concerned.

However, there are two reasons which strongly suggest that the Court regarded the trade mark in question as a position mark. Firstly, the graphic representation contains dotted lines, which is characteristic for defining the scope of protection of a position mark (see Article 3(3)(d) EUTMIR). In line with this, the CJEU refers to “the sole of a high-heeled shoe“, thereby taking into account the non-dotted outlines. Secondly, this can be deducted from the Court’s statement on abstract colour marks. It stated that abstract colour marks consisted of a contourless representation of the colour and as such did not depict a shape. As a consequence, abstract colour mark fall wholly outside the scope of Article 3(1)(e). If the Court considered that the mark was a colour mark per se, there would have been no need to decide whether this mark consisted exclusively of the shape, as an abstract colour mark does not consist of a shape to begin with.

Take away and impact

In summary, other properties of the sign – such as the colour – may have an important impact on trade marks in that the trade mark no longer “exclusively” consists of the shape, and hence does not fall foul of Article 3(1)(e) of Directive 2008/95/C.

The Dutch court which made the reference to the Court of Justice is, in deciding the dispute before it, bound by this interpretation given. Likewise, the Court of Justice’s judgment binds other national courts before which the same problem is raised.

As a practical remark, it is recommendable to indicate the specific colour by an internationally recognised colour code, and also add a (explanatory) description that the colour indicates the positioning. For future applications, the following two aspects are also relevant:

  • It remains difficult to highlight the importance of colour present in three dimensional trade marks that consist of the shape and a colour: It has to be born in mind that a description, which the CJEU considered important, is not possible to add a description to these marks (see argumentum e contrario Article 3(2), Article 3(3)c) EUTMIR).
  • Directive 2008/95 is set to be replaced by Directive 2015/2436. The latter must be transposed by 14 January 2019. Article 3(1)(e)(iii) will be reworded and the corresponding provision, Article 4(1)(e)(iii) of Directive 2015/2436, will include “signs which consist exclusively of ‘the shape, or another characteristic, which gives substantial value to the goods’”. While the colour may not be considered to fall under the notion “shape”, it may be considered “another characteristic”. However, if the colour was distinctive for the respective goods or services, it should render the trade mark as a whole distinctive.