On Tuesday, June 12, 2018, the European Union’s (EU) highest court, the Court of Justice of the European Union (the CJEU) (La Cour de justice de l’Union européenne), held that French designer Christian Louboutin’s mark consisting of a color applied to the sole of a shoe is not subject to the EU’s prohibition of the registration of shapes. Notably, the CJEU did not follow the February 2018 opinion of an advocate general, who wrote that the red color was intertwined with the shape of the sole.

Background
Louboutin is known for designing high-heeled shoes for women. These are no ordinary shoes, however; over the years, they have become a status symbol because of their red outer soles and hefty price tag. As noted by rapper Belcalis Almanzar aka Cardi B in her hit song “Bodak Yellow”: “These expensive, these is red bottoms, these is bloody shoes. Hit the store, I can get ’em both, I don’t wanna choose.”

But the celebrity endorsements and popularity of the brand have not made obtaining—and maintaining—trademark registrations for the red soles a walk in the park; it has taken a lot of shoe leather.

In 2009, Louboutin filed an application for a Benelux trademark in connection with “footwear.” Louboutin obtained a registration for that trademark the following year. (Three years later, Louboutin amended the registration to limit the goods covered to “high-heeled shoes (other than orthopaedic shoes).”) In the application, Louboutin described the mark as consisting “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).” The mark is reproduced below:

In May 2012, Dutch “high street” chain Van Haren sold high-heeled women’s shoes with red soles. This caused Louboutin to initiate proceedings before the Rechtbank Den Haag (District Court, The Hague, Netherlands), asserting that Van Haren had infringed Louboutin’s mark. Two months later, the court issued a default judgment, upholding, in part, Louboutin’s claims.

Van Haren then challenged the judgment before the court. Relying on EU trademark directives, Van Haren argued that the mark was invalid because the mark “is a two-dimensional figurative mark that consists of a red-colored surface.” Specially, Van Haren relied on the following directives.

Article 2 of Directive 2008/95 provides that a trademark may consist of:

“any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.”

Article 3 of that directive outlines the grounds for refusal or invalidity:

“The following shall not be registered or, if registered, shall be liable to be declared invalid:  * * * (e) signs which consist exclusively of:  (i) the shape which results from the nature of the goods themselves; (ii) the shape of goods which is necessary to obtain a technical result; (iii) the shape which gives substantial value to the goods.”

Article 2.1 of the Benelux Convention on Intellectual Properly similarly provides: “signs consisting solely of a shape which results from the nature of the goods, which gives a substantial value to the goods or which is necessary to obtain a technical result, cannot be considered as being trademarks.”

The district court noted that the red sole gives substantial value to Louboutin’s shoes because “that colour forms part of the appearance of those shoes and plays an important role in a consumer’s decision to purchase them.” The court, however, decided to refer a question to the CJEU: Under Article 3, is the term “shape” “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?”

The Opinion
The issue before the CJEU was:

“whether Article 3(1)(e)(iii) of Directive 2008/95 must be interpreted as meaning 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, consists exclusively of a ‘shape,’ within the meaning of that provision?”

Because the directive does not define the term “shape,” the court looked to “its usual meaning in everyday language,” “the context in which it occurs,” and “the purposes of the directives.” The court explained that “in the context of trade mark law, the concept of ‘shape’ is usually understood as a set of lines or contours that outline the product concerned,” and that it does not follow that “a colour per se, without an outline, may constitute a ‘shape.'”

The court next considered “whether the fact that a particular colour is applied to a specific part of the product concerned results in the sign at issue consisting of a shape within the meaning of Article 3[?]”

The court noted that “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.”

The court further explained that the German, French, and United Kingdom governments, as well as the European Commission, have observed that Louboutin’s mark “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.” The court found that a trademark, such as Louboutin’s, could not be regarded as consisting “exclusively” of a shape, where “the main element of that sign is a specific colour designated by an internationally recognized identified code.”

In short, the answer to the district court’s question is: Under Article 3(1)(e)(iii), “a sign consisting of a colour applied to the sole of a high-heeled shoe * * * does not consist exclusively of a ‘shape,’ within the meaning of that provision.”

What’s Next?
The next step is for the district court in The Hague to deliver a final ruling based on the CJEU’s decision. The victory will likely allow Louboutin to monopolize red-soled high-heeled shoes in Europe, and will be welcomed by other brands that rely on color combinations.

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