The shape of colour?
Louboutin has maintained its red sole registrations, reports Nicole Giblin. C‑163/16, Christian Louboutin and Christian Louboutin SAS v Van Haren Schoenen BV, CJEU, 12th June 2018.
C‑163/16, Christian Louboutin and Christian Louboutin SAS v Van Haren Schoenen BV, CJEU, 12th June 2018
Key points
- The word “shape” should be given its usual meaning in the context of Article 3(1)(e)(iii) of Directive 2008/95/EC – “the lines and contours of a product”
- Louboutin’s trade mark consisting of the colour red, applied to the sole of a shoe, is not exclusively a “shape” and is not therefore excluded from protection
Christian Louboutin’s striking red soles have dominated fashion and legal headlines for years. The present case reiterates that, at least for now, shape does not mean colour, and Louboutin’s trade mark registrations for its red soles are still considered valid and enforceable.
In 2010, Louboutin secured registration for its iconic red soles in the Benelux, with the mark being described as follows: “The mark consists of the colour red (Pantone 18‑1663TP) applied to the sole of a shoe as shown (the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark).”
By 2012, Van Haren Schoenen BV was retailing fashion shoes featuring red soles in stores in the Netherlands. Louboutin brought infringement proceedings in 2013 at the Rechtbank Den Haag (District Court of the Hague), resulting in a default judgment upholding the same.
Van Haren appealed and argued that Louboutin’s registration was invalid on the basis that the trade mark consisted of a “shape” arising from the nature of, and giving substantial value to, the goods, and was therefore excluded from protection. In acknowledging the value that Louboutin’s red soles give to the goods, the Court was subsequently unsure whether “shape” was limited to the 3D properties of the goods or whether it could include other properties, such as colour.
Colour question
The question was referred to the CJEU, which considered whether a colour applied to the sole of a shoe could be considered to be a shape within the provision of Article 3(1)(e)(iii) of Directive 2008/95/EC. In its decision, the CJEU commented that the usual meaning of “shape” is the lines or contours of a product, and that colour without any such outline did not fall within this meaning. Even where the shape of a product creates an outline for the colour, this does not mean that the protected sign is itself a shape. The description of the trade mark clearly states that the scope of the registration extends to the colour red as applied to the sole, and does not include the contour of the shoe.
In the event that the colour could be interpreted as a shape, the registration did not consist “exclusively” of a shape, particularly since the main element of protection was a clearly defined Pantone colour.
Ultimately, the CJEU held that “a sign consisting of a colour applied to the sole of a high-heeled shoe, such as that at issue in the main proceedings, does not consist exclusively of a ‘shape’, within the meaning of that provision”.
Mind the meaning
This decision reiterates the importance of reading the provisions of the law in line with the ordinary meaning of the words. To find that shape means colour would arguably stretch interpretation beyond what was intended by the provisions, and by Louboutin’s registration. It also signifies the importance of properly describing non-traditional trade marks. In Louboutin’s case, expressly excluding the contour has left little doubt over the intended scope of protection.
Nicole Giblin is a Chartered Trade Mark Attorney at Clyde & Co, based in the Dubai office