Good for the sole?

July 20, 2018

Trade Marks

Luxury footwear designer Christian Louboutin’s quest to protect the iconic red sole trade mark is finally over, after the European Court of Justice (ECJ) handed down its much-awaited judgment.

The signature red sole originated back in 1993, when Christian Louboutin grabbed his assistant’s red nail varnish and painted it on to the sole of a shoe because he disliked the design.

Louboutin registered the red soles as a trade mark for footwear back in 2010, describing it as ‘the colour red (Pantone No. 18.1663TP) applied to the sole of a shoe.’

Back in 2012, Louboutin sued Dutch high-street chain rival, Van Haren, for releasing a line of red sole shoes, a design which closely resembled Louboutin’s. Van Haren counterclaimed that Louboutin’s trade mark was invalid on the grounds that it consisted exclusively of a shape which adds substantial value to the goods, one of the absolute grounds for trade mark refusal of shapes.

The case was referred to the ECJ to determine whether the notion of shape is exclusively related to the three-dimensional properties of goods, or whether other properties, such as the colour of the goods could constitute a shape.

The ECJ made the position clear – that Louboutin’s red sole trade mark did not constitute a shape. They stated that the description of the goods made it clear that the contour of the shoe did not form part of the trade mark, and merely showed the positioning of the red colour. The trade mark could not be regarded as consisting exclusively of a shape.

Colour has always been of crucial importance to fashion brands, providing them with a unique identity. This judgment will come as a success for Louboutin and other luxury fashion brands, who may be able to rely on specific colours and colour combinations to distinguish and identify the origin of their products, encouraging other brands to trade mark colours for their fashion related products.

Louboutin will now be able to assert its EU trade mark rights against replica products and maintain its prestigious reputation and goodwill in its distinctive colour red.

Briffa comment:

In general, the courts have taken the approach that consumers do not perceive a colour as a sign which designates the origin of the goods or services. As a result, brands have found it difficult to show that colours or combination of colours are distinctive in relation to their goods or services. However, we have seen that registering colour marks is possible, such as: Heinz who registered the turquoise colour in relation to their baked beans packaging as a trade mark, Lloyds TSB who registered a green colour for to their banking services and Cadbury’s who trade marked the purple coloured label in relation to their chocolate confectionary.

Briffa advises on all aspects of contentious and non-contentious trade mark law and practice. If you would like to discuss your trade mark issue, or any other intellectual property issue, please do not hesitate to get in touch and we will be happy to arrange a free consultation.

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