Green light for red sole as Louboutin trade mark held to be valid

The European Court ('CJEU') has confirmed that Christian Louboutin's iconic red sole is a valid trade mark.

Background

Louboutin's mark was attacked by a competitor, Van Haren, on the basis that it was an invalid trade mark. The particular grounds relied on for invalidation was that the mark consists of a common-place shape and that shape gives 'substantial value' to the goods. Van Haren argued that Louboutin should not have a monopoly to use that shape of sole.

Louboutin argued that the trade mark did not protect the shape of the red sole, but instead the specific red colour positioned on the underside of a shoe. Louboutin's trade mark application was clear that the shape was not to be taken into account and was given for context only.

The Dutch Court asked the CJEU for guidance on what constituted a shape mark and whether Louboutin's mark fell within this category.

The Attorney General ('AG') gave his opinion (and another supplemental opinion) to the CJEU back in February on the validity of Louboutin's mark. He concluded that the mark was a 'shape' mark and therefore liable to invalidation however he also noted that when considering whether a shape ‘gives substantial value’ to the goods, the reputation of the mark or its owner should not be taken into account.

This opinion was met positively by Louboutin, who argued that the shape of the sole did not give substantial value to its shoes; it was the reputation and marketing of the iconic red sole by Louboutin which gave the goods substantial value. On his analysis, the mark would be valid.

Is Louboutin's trade mark valid?

The CJEU has now considered the AG's opinion and confirmed that Louboutin's trade mark is not exclusively a shape mark as the main element of the mark is the specific red colour. The CJEU noted that Louboutin was not seeking to protect the shape itself but instead the application of the red colour to the sole of the shoe.

This means that Louboutin's mark does not fall within the grounds for invalidity and is therefore a valid trade mark.

What does this ruling mean for Louboutin?

This is clearly a positive result for Louboutin. Whilst the case will now go back to the Dutch Court for its final decision, the judgment of the CJEU has clarified a critical point which indicates Louboutin's trade mark will be enforceable. This means that Louboutin can continue to enforce his trade mark rights across the EU.

This decision provides welcome guidance on the treatment of shape and colour marks by the CJEU, which is surprisingly in contrast to the AG opinion.

Interestingly, the Delhi High Court in India has recently reached the opposite conclusion and confirmed that Louboutin's single red colour is not capable of trade mark protection. Whilst the European Courts now appear to be more favourable to non-conventional trade marks, this is clearly not an approach taken worldwide and should therefore be considered when developing international brand strategies.

The CJEU judgment is available here.

For more information please contact Charlotte Bolton, Associate in the Commercial Dispute Resolution Team, on charlotte.bolton@michelmores.com or +44 (0)1392 687745.