Europe’s highest court has today issued a seemingly positive ruling to fashion company Christian Louboutin after saying that a trademark for its red-s

Europe’s highest court has today issued a seemingly positive ruling to fashion company Christian Louboutin after saying that a trademark for its red-sole high heel does not meet legal provisions that prevent certain shape marks being registered.

However, lawyers have told WIPR that while this is an unexpected victory for Louboutin, there is still room for discussion on the decision’s future impact.

In its judgment, the Court of Justice of the European Union (CJEU) said article 3(1)(e)(iii) of Directive 2008/95/EC means that a sign consisting of a colour applied to the sole of a high-heel shoe, such as Louboutin’s, does not consist exclusively of the “shape” within the meaning of that provision.

Article 3(1)(e)(iii) says signs that consist exclusively of “the shape which gives substantial value to the goods” should not be registered as a trademark or are liable to being invalidated if they have been registered. 

The ruling comes in a dispute between Louboutin and Dutch retailer Van Haren, which has sought to invalidate Louboutin’s Benelux trademark by claiming it consists exclusively of a shape which gives the goods covered substantial value.

The District Court of The Hague referred the case to the CJEU.

According to the CJEU, the concept of ‘shape’ is generally understood to mean a set of lines or contours that delimit the product concerned in space.

Although the shape or part of a product does play a role in delimiting a colour in space, “it cannot be considered that a sign consists of that shape where it is not that shape that the registration of the trademark is intended to protect, but only the application of a colour to a specific location of that product”, the court said (translated from Dutch).

It added: “The contested mark does not relate to a specific shape of [a] high-heel sole, the description of that mark expressly indicating that the outline of the shoe is not part of that mark, but merely serves to highlight the location of the red colour covered by the registration.”

Paul Tjiam, managing associate at law firm Simmons & Simmons in Amsterdam, said The Hague court has already indicated in an earlier judgment (2015) that if it finds (following the CJEU's return of the case to The Hague) that the red sole mark falls outside the relevant provisions of Benelux IP law, it will rule that the trademark is valid. He added that the court is likely to follow the CJEU's ruling from today and come to this conclusion.

This is because it has already decided that Louboutin provided sufficient evidence to show that the red sole mark has acquired distinctive character through use, he said. However, he noted that Van Haren could still appeal against any such decision to The Hague Appeal Court.

As the CJEU’s ruling concerns Directive 2008/95/EC, which has since been replaced by Directive 2015/2436 as part of the wide-scale EU trademark reforms, its impact may be further limited. The old article 3(1)(e)(iii) included the wording “the shape which gives substantial value to the goods”, whereas the new law has added “or another characteristic” after the word “shape”.

Therefore, according to Gregor Vos, an advocate at law firm Brinkhof in Amsterdam, the new wording could potentially apply to colours. If that is the case, today’s decision may be merely a pyrrhic victory, he said.  

“If I were Van Haren, I would file a new cancellation request under the new law, as I would say colour could qualify as another characteristic”, he said, but he admitted that there is no case law in this area yet.

Flip Petillion, founder of law firm Petillion in Brussels, added that the CJEU did not consider other important questions that advocate general Maciej Szpunar raised in his opinion in February, such as whether the red sole gave substantial value to the goods because of the intrinsic appeal of the red sole taken on its own or because of Louboutin’s reputation and marketing efforts.