In a decision on 12 June 2018 the Court of Justice of the European Union (CJEU) held that designer shoe maker Christian Louboutin’s distinctive red sole (shown below) is not exclusively a shape and therefore qualifies as a valid trade mark registration.
This case started in 2012 when Dutch shoe retailer Van Haren started to sell high-heeled women's shoes with red soles. Christian Louboutin initiated trade mark infringement proceedings before the District Court in The Hague and succeeded in the initial proceedings. Van Haren then challenged the validity of Louboutin's red sole trade mark under Article 3(1)(e)(iii) of Directive 2008/95/EC. Article 3(1)(e)(iii) states:
‘3(1) The following shall not be registered or, if registered, shall be liable to be declared invalid:
(e) signs which consist exclusively of:
(iii) the shape which gives substantial value to the goods.’
The Court of The Hague asked the Court of Justice whether the red sole qualified as a trade mark, or whether it was (‘exclusively’) a shape that gave ‘substantial value’ to the product and would therefore be excluded from registered trade mark protection.
The CJEU held that the red sole did not comprise a shape and that accordingly, it did qualify as a trade mark. Of fundamental importance to this decision was the fact that Louboutin's trade mark (depicted with broken lines) has the following disclaimer in its description:
‘The trademark consists of the colour red (Pantone 18.1663TP) applied to the sole of a shoe as shown (the outline of the shoe is therefore not part of the trademark but serves to show the positioning of the trademark).’
The case will now re-commence in The Hague where the court will decide on its final ruling. However, in the meantime, the new Trademark Directive and the EU Trademark Regulation have come into force widening the grounds of exclusion to include any other ‘characteristic’ (ie not just shapes) that gives substantial value to the goods. The Louboutin red sole trade mark registration dates from before these new rules were introduced but there is a possibility that the colour red could be construed as a characteristic that gives substantial value to the goods. This expanded scope for exclusion will be particularly problematic for fragrances and olfactory marks, where the smell/fragrance necessarily gives value to the product/perfume.