Louboutin's red trade mark dispute strides on

Christian Louboutin has been designing red-soled high heels for over a quarter of a century. The likes of which are coveted by celebrities and adorn the pages of most fashion magazines world-wide.

The bright red sole of the Louboutin shoe, specifically in Pantone 18 1633TP, is iconic. It is this feature which Louboutin is seeking to protect.

Louboutin registered his red sole trade mark as a Benelux mark in Class 25 for shoes.

In 2012, a Dutch retailer, Van Haren, introduced a new line called 'Fifth Avenue by Halle Berry' which included high heeled red soled shoes. Louboutin argued that the Van Haren shoes infringed his brand's trade mark and was granted a temporary injunction by the Netherlands Court.

Van Haren appealed on the basis that Louboutin's mark was invalid. Under Article 4 of the European Trade Mark Directive 2015, if a trade mark falls within the absolute grounds for refusal, it cannot be registered.

The relevant ground in this case is that a trade mark must be refused were it consists exclusively of a 'shape which gives substantial value to the goods' (now Article 4(1)(e)(iii).

The Netherlands asked the Advocate General Szpunar ('the AG') of the Court of Justice of the European Union for a preliminary ruling on the specific question of whether the notion of 'shape' included properties such as colour.

Last week, the AG issued a further opinion to supplement to his first opinion back in June 2017. The full text of the AG's opinion is here. Although the CJEU's decision has not yet been handed down, some of the key points are as follows:

  • The mark could not be classified as a 'colour mark' as the colour could not perform the function of a trade mark (i.e. to identify the proprietor) when used separately from the shape of the shoe.
  • The trade mark should be viewed as "a sign consisting of the shape of the goods and seeking protection for a colour in relation to that shape".
  • The absolute grounds for refusal should not all be interpreted in the same way and could apply to a sign combining shape and colour, i.e. Louboutin's mark.
  • The concept of a shape which gives 'substantial value' relates only to the intrinsic value of the shape and not the reputation of the mark or its proprietor.
  • The question of whether the red sole gives 'substantial value' to the goods remains a factual matter for the Netherlands Court to decide.

If the shape of the red sole gives substantial value to the shoe, the mark would be invalid. If it is the reputation of the trade mark, as represented by the red sole sign, which confers substantial value to the shoe, the trade mark is not by nature invalid.

It appears that the AG's opinion has given scope to save the Louboutin trade mark with this wording. It is therefore still possible for the Netherlands Court to decide in Louboutin's favour.

This opinion appears to have been widely reported in the media as a defeat for Louboutin on the basis that the colour red is unlikely to be able to perform the essential function of a trade mark when used out of context. This is not entirely surprising in light of recent case law.

Louboutin has reacted positively to the AG's opinion. In his view, the shape of the sole of its shoes (to which the red colour is applied) is not intrinsically valuable, the colour applied only has value 'because of our [Louboutin's] marketing efforts as well as the public's associate of such colour to a woman's heeled shoe outsole with Christian Louboutin'. On that basis, even if a shape mark (which Louboutin disputes), the trade mark would not fall within the absolute grounds for refusal.

It will now be for the Netherlands' court to apply the CJEU decision (once handed down) to the background dispute. It has previously indicated a view that the Louboutin trade mark is a shape mark which gives substantial value to the goods and therefore falls within the absolute ground for refusal.

It will be interesting to see whether its position changes in the final decision as a result of the AG's opinion. For Christian Louboutin, it will be a nervous wait.

We will keep you updated.