It’s all about that flash of red, that instantly elevates the status of an outfit.
Louboutin have successfully registered the red sole of their shoe as a trade mark in many countries. However, in Benelux, this may no longer be the case.
In 2010 Louboutin successfully registered the above trade mark in Benelux in Class 25, for “….footwear….”, which was later amended to limit the goods to “….high heeled shoes….”. The trade mark is described as consisting “….of the colour red applied to the sole of a shoe as shown….”
A competitor, Van Haren sold high heel shoes with red soles in the Netherlands, therefore infringing Louboutin’s registered trade mark. In response, Louboutin commenced infringement proceedings, however, Van Haren commenced invalidity proceedings against Louboutin, stating the registered trade mark was invalid, as it a two-dimensional mark (shape mark).
The matter was referred to the CJEU, for a preliminary ruling on the following issue:
“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”
Article 3 (1) (e) (iii) of Directive 2008/95, prohibits registration of, or if registered, shall be liable to invalidation, for signs which consist exclusively of:
(iii) the shape which gives substantial value to the goods.
The opinion of the Advocate General, Szpunar, in examining the essential characteristics of the contested mark, stating that the trade mark should be equated with one consisting of the shape of the goods and seeking protection for a colour in relation to that shape, rather than a trade mark consisting of a colour. The concept of a shape which ‘gives substantial value’ to the goods, within the meaning of Article 3(1) (e) (iii) provision, relates only to the intrinsic value of the shape, and does not permit the reputation of the mark or its proprietor to be taken into account.
This may now have further repercussions for pre-existing colour trademarks, within the EU, in addition, increasing the difficulties for less conventional marks to gain registration.
However, In the USA, Louboutin presently have a successful trade mark registration for the red sole of the shoe, however, in this context, it is the contrast which is protected:
“…. The mark consists of a red lacquered outsole on footwear that contrasts with the color of the adjoining (“upper”) portion of the shoe….”
This affords trade mark protection for the red sole, in contrast to the rest of the shoe. However, as the YSL infringement case highlighted, this trade mark, does not prevent the sale of red shoes, with red soles!