The latest development in the red sole saga continues…

5 months after the Advocate General's opinion on 22 June 2017 here, the Christian Louboutin red sole case now appears to be making its way back to courts, with the CJEU exercising judgment to re-open the case. 

In summation, the case concerns Louboutin's 2010 Benelux registration for "the colour red (Pantone 18 1663TP) applied to the sole of a shoe as shown above. In 2012 Dutch shoe maker Van Haren also released its own shoe with a red sole. Louboutin later sued the Dutch shoemaker for trademark infringement. The first judgment was in Louboutin's favour and 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 appeal, Van Haren challenged the validity of Louboutin's trade mark, under Article 3(1)(e)(iii) of the Trade Marks Directive (2008/95/EC), which prevents registration of any sign which consists exclusively of a "shape which gives substantial value to the goods".  Van Haren argued that the colour red conforms to the shape of the shoes and gives them substantial value. 

In order to decide on the matter, the Dutch court; the Rechtbank Den Haag (District Court of The Hague) referred to the CJEU for a preliminary ruling to determine whether the notion of ‘shape’ is limited to the three-dimensional properties goods, such as their contours, measurements and volume or whether it includes other (non three-dimensional) properties of the goods, such as their colour.

 The CJEU Advocate General, Maciej Szpunar issued an opinion that indicated that the Louboutin "mark at issue is better conceptualised as a mark consisting of the shape of the goods and seeking to protect a certain colour in relation to that shape."

And confirmed:  "that the presence of a colour applied to an element of the surface of the goods can be regarded as a characteristic reflected in the shape of the goods."

The Advocate General, Maciej Szpunar supported his approach with reference to the adoption of the new Trade Mark Directive 2015/2436, Article 4(1)(e) of which refers to ‘the shape, or another characteristic [of the goods].’ Stating that with “regards signs consisting of the shape and colour of the goods, which may be registered under both the old and the new regime, the addition of the reference to ‘another characteristic [of the goods]’ can be interpreted in two ways: it can be understood as changing the law applicable to such signs, or simply as clarifying it.” Thus effectively closing the case on the matter. Given the divergence in approaches around the EU regarding trademark law, guidance by the Court of Justice of the EU (CJEU) on this point had been eagerly awaited - though it still left some confused...as to when colour can be regarding as a shape?

Now, after hearing the Advocate General on the matter, the courts have deemed it necessary to order the reopening of the oral part of the procedure, with the case re-returning to the CJEU requesting the parties to attend a new hearing, where advocate General, Maciej Szpunar will deliver another oral opinion - this is rather unusual. The case has now been assigned to the court’s Grand Chamber due to issues of principle concerning European Union trade mark law and will be composed of a greater number of judges.

The hearing date is 14th November 2017.

More on this case over the coming days…