For the CJEU, the red sole can belong to Louboutin
We have today finally heard the most eagerly awaited judgment by the fashion industry in the lawsuit pitting the famous French designer against Van Haren Schoenen BV due to its marketing of high-heel shoes with a red sole – Christian Louboutin’s hallmark.
The proceeding became more complicated when the Dutch firm, far from admitting the infringement, filed an invalidity action against Benelux trademark no. 0874489, claiming the color red (Pantone 18 1663TP) applied to the sole of a high-heel shoe:
For Van Haren the strategy was clear – if there is no trademark to infringe how can there be infringement. However, the mark in question is not a usual trademark and, given the doubts in interpreting the type of trademark involved – shape versus color – the Court in The Hague requested a preliminary ruling at the CJEU:
Is the notion of ‘shape’ within the meaning of Article 3(1)(e)(iii) of Directive 2008/95/CE (‘Form’, ‘vorm’ and ‘forme’ in the German, Dutch and French language versions of the Trade Marks Directive respectively) 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 color?”
In our previous post, the Advocate General of the case, Maciej Szpunar, held that the trademark registered by Louboutin was a shape mark, not a color mark, and as such came under the prohibition of article 3 (1) (e), (iii) of the Directive since it was a shape that gave “substantial value” to the product per se and could not be appropriated. This is an absolute prohibition which, furthermore, cannot be avoided through evidence of supervening distinctiveness, a very valuable weapon for Louboutin when it comes to defending the existence of a color trademark, since he successfully used this argument in his proceeding against Yves Saint Laurent in the United States (2011).
However, the Judgement by the CJEU of June 12, 2018 in Case C-136/16 has not agreed with the Advocate General. The CJEU does not accept that the mark registered by Louboutin is a shape mark and instead holds that it is a color mark. In the press release published today by the CJEU, it claims that the shape is used solely in order to show the position of the red color covered by the registration:
“Furthermore, 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 color, 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 color to a specific part of that product. In the present instance, the 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 color covered by the registration. The Court also holds that a sign, such as that at issue, cannot, in any event, be regarded as consisting ‘exclusively’ of a shape, where the main element of that sign is a specific color designated by an internationally recognized identification code.
In light of the above, it would seem that Louboutin is playing with a better hand when it comes to defending the validity of its trademark in Benelux, since in the case of color trademarks, intensive use can make the mark in question acquire the necessary distinctiveness to comply with the essential function of the mark: to indicate the origin of the product. However, it will ultimately be up to the Court of The Hague to decide, in view of the conclusions of the CJEU, whether the mark registered by Louboutin is valid.
Personally, every time I see a pair of Louboutin shoes I remember a scene from Los Soprano in which Adriana appeared in Carmela’s dreams. In the scene Adriana walks away through the streets of Paris, showing the red soles of her shoes, and turns around to wave goodbye to Tony Soprano’s wife. And yes, it is then that I want Adriana’s shoes to be by Louboutin.