BREAKING - Louboutin Comes Out Victorious in CJEU's Trademark Ruling Over Red-Sole Shoes

Image @ Louboutinworld

Christian Louboutin has come out victorious in today's CJEU ruling on the validity of the brands red sole shoe trademark.

One of the most discussed trade marks in the world of fashion and the subject of a number of legal disputes. Today, the courts have handed down a significant ruling, in what has been eagerly awaited decision between the famed Parisian fashion house and the Dutch shoe maker Van Haren that settles the question on whether the famed Parisian designers red sole trademark is a shape or colour mark.

Background

The red shoe sole discussion has been ongoing since 2012 when Dutch shoe maker Van Haren also released its own shoe with a red sole. Louboutin later sued the Dutch shoe maker for trade mark infringement. The case reached the Court of Justice of the European Union after Van Haren appealed against a 2013 Dutch court ruling that it should stop manufacturing and selling black and blue shoes with red soles. On 21 March 2016, the Rechtbank Den Haag (District Court of The Hague) referred the following question to the Court of Justice for a preliminary ruling to determine whether: ‘The notion of ‘shape’ within the meaning of Article 3(1)(e)(iii) of Directive 2008/95 ...is 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?’

What has been at issue is whether or not "shape" includes colour. If it does, the mark can be ruled invalid.

Today's Ruling

That question has now been answered by way of this recent ruling.  

In today's judgment, the Court of Justice of the European Union (CJEU) confirms that the Louboutin red sole trademark "does not relate to a specific shape of sole for high-heeled shoes since the description of that mark explicitly states that the contour of the shoe does not form part of the mark and is intended purely to show the positioning of the red colour covered by the registration. " Therefore confirming the validity of the infamous Louboutin red sole. 

Notwithstanding this, the case also  provides further clarity on the trade mark directive in regards to the provision for absolute grounds for refusal of registration of signs consisting of shape.

In coming to the above decision the courts took the view that, "since the trade mark directive provides no definition of the concept of ‘shape’, the meaning of that concept must be determined by considering its usual meaning in everyday language." The Court points out that it does not follow from the usual meaning of that concept that a colour per se, without an outline, may constitute a ‘shape.’

“Furthermore, while it is true that the shape of the product or of a part of the product plays a role in creating an outline for the colour, it cannot, however, be held that a sign consists of that shape in the case where the registration of the mark did not seek to protect that shape but sought solely to protect the application of a colour to a specific part of that product.”

Confirming that a trademark sign, “such as that at issue, cannot, in any event, be regarded as consisting ‘exclusively’ of a shape, where the main element of that sign is a specific colour.”

Today's ruling of the Court of Justice of the European Union (CJEU) can be read as a significant win for the fashion designer in his attempt, to protect his trade mark in the Pantone colour red on high-heeled shoes, as it settles the matter on the issue of validity of the Louboutin red sole mark, by confirming that such mark does not fall within absolute ground for refusal of registration.

Implications

Essentially this can be seen as a win for the famous fashion designer against the shoe chain Van Haren. The Court of Justice of the European Union (CJEU) ruling will also have far reaching implications that relate to the interpretation of the trademark directive in this area.  

Now that the CJEU have given their ruling clarifying the contested point of EU law at issue, the case will head back to the Dutch national courts to decide - the outcome of which will affect the position of Louboutin’s distinctive red-soled shoes trade mark registration in Benelux region (Belgium, the Netherlands and Luxembourg) of Western Europe.

The case, Christian Louboutin SAS v Van Haren Schoenen BV (Case C-163/16) can be found here.