The European Court of Justice (CJEU) has ruled that Christian Louboutin’s famous red sole does not consist solely of ashape that significantly increases the value of aproduct, and therefore can be registered as atrademark. This is an important victory for the fashion designer in the long-running battle concerning red-soled shoes.

European Court of Justice judgment of 12 June 2018 in case C-163/16

Shape cannot be protected as atrademark

Registration of atrademark gives the owner the exclusive right, potentially unlimited in time, to use the mark on the market with regard to specific goods or services. On the other hand, certain marks have to remain in the public domain. This is the purpose of Art. 3(1)(e) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks. Under this directive, signs that consist exclusively of shape, whether the shape is due to the nature of the goods, or whether it is necessary to obtain atechnical result or gives substantial value to the goods, cannot be registered as trademarks. This provision is intended to prevent situations in which the owner gains amonopoly over solutions or features that are technical, practical, or functional.

The dispute in which this judgment was issued concerned the question of whether the colour red on the sole of ahigh-heeled shoe is in fact asign amounting to the shape of aproduct, in which case it cannot be registered as atrademark.

Dispute and request for preliminary ruling

Loubotin’s famous red high-heeled shoes, which have attained cult status in some circles, have now been on the case list of courts and authorities in countries around the world for many years. The disputes surrounding them have been followed carefully not only by businesses and the fashion industry, but also by intellectual property lawyers. In 2012 we discussed the dispute between Christian Loubotin and YSL (in Polish). At that time, Christian Louboutin said he would be intensifying the battle to protect his rights and undertook another battle to protect the red-soled shoes. In June 2018 it had one of its most famous presentations – abattle over the trademark for the red-soled shoes before the European Court of Justice.

The dispute concerned atrademark registered in the Benelux Office for Intellectual Property under number 0874489 for class 25 products, which are “high-heeled footwear (other than orthopaedic footwear)” shown below:

The application for registration read “the mark consists of the colour red (Pantone 18‑1663TP) applied to the sole of ashoe as shown (the contour of the shoe is not part of the trademark but is intended to show the positioning of the mark)”. The image and the description reveal therefore that the main element of the mark is the colour red, defined in reference to the international colour chart. The red colour is located in aspecific place on the heel, but the shape of the sole is not part of the mark.

The dispute erupted in 2012, when Van Haren started selling high-heeled shoes with ared sole in the Netherlands. In response, Christian Louboutin filed alawsuit in the Hague. In 2013 the court issued ajudgment by default that partly ruled in favour of the fashion designer.

Van Haren contested the judgment, arguing that the disputed trademark should be invalidated because Louboutin’s red sole was nothing more than agraphic, two-dimensional trademark created with ared surface which, when applied to the sole, constituted the shape of the sole and significantly increased its value. This was therefore grounds for invalidation of registration. Under art. 3(1)(e)(iii) of Directive 2008/95/EC, “signs which consist exclusively of ashape which gives substantial value to the goods” shall not be registered, or if registered shall be liable to be declared invalid.

The court in the Hague faced afundamental question, which it referred to the European Court of Justice: under art. 3(1)(e)(iii) of Directive 2008/95/EC is the notion of shape limited to three-dimensional properties of the goods, such as their contours, measurements and volume, or does it include other (non-three-dimensional) properties of the goods, such as their colour? The court was asking whether the colour red applied to any sole of ahigh-heeled shoe which creates an outline for the colour red is asign consisting exclusively of ashape which gives substantial value to the goods.

Opinion of the advocate general

The advocate general, Professor Maciej Szpunar, presented his standpoint in the case. In his first opinion of June 2017 and additional opinion of February 2018, the advocate general devoted alot of attention to the issue of classification of the disputed mark. He presented three concepts, stating that it is (i) acolour per se, (ii) aposition mark, or (iii) amark consisting of the shape of the goods for which protection is also needed for the colour. Ultimately, the advocate general favoured the last option, and thus his next question would have to be whether amark consisting of both the shape of the goods and the colour is amark described in art. 3(1)(e)(iii) of Directive 2008/95/EC.

The advocate general found the answer to this question to be yes, and argued that the provision in question should be interpreted broadly. In his view, this applied not only to marks consisting exclusively of ashape, according to the literal wording, but also to marks consisting of both the shape and colour of the goods. Marks of this kind can and must be examined from the point of view of functionality, otherwise the greater good, which is the underlying principle of this provision, would not be fully protected.

The judgment of the CJEU

The CJEU’s judgment differed in fact from the standpoint of the advocate general, which is unusual in rulings given by the authority.

The CJEU found that as the term “shape” was not defined in the directive, this concept should be interpreted by considering its usual meaning in everyday language, while also taking into account the context in which it occurred and the purposes of the directive. It found that the concept of “shape” is understood as aset of lines or contours that outline the product concerned. It does not follow from the directive or from CJEU case-law, or from the usual meaning of that term, that acolour per se, without an outline, may constitute ashape.

Nevertheless, in the disputed mark, aparticular colour was applied to aspecific part of the product, and the question arises whether this results in the sign consisting exclusively of ashape. The CJEU found that this was not the case. Even though in Louboutin’s sign the sole is the outline for the colour, this is not protected. Only the use of aparticular colour on aspecific part on the product is protected. Regardless of the above, the CJEU found that the sign could not be considered to consist “exclusively of ashape”, as the main element of the sign is aprecisely defined colour.

Summary

The judgment given by the CJEU is found to be lacking when it comes to the statement of reasons. Despite this, it expressly confirms Christian Louboutin’s exclusivity with regard to red-soled high-heel shoes, and this will certainly improve his position on the market.

On the other hand, the judgment is not in line with the case-law gradually formulated to date, in which the CJEU paid more attention to the ratio legis of the legal provisions and the public interest. The judgment adopts anarrow interpretation of provisions preventing registration of marks consisting exclusively of shape. The CJEU’s interpretation could mean that businesses will have more options with regard to registration and seeking protection of “borderline” marks, i.e. marks that consist not only of shape but also certain other features such as colour.