The Advocate General of the CJEU rules that Louboutin’s red sole is not a color mark
Red is not exclusive to Louboutin. The conclusions by the Advocate General Maciej Szpunar delivered on February 6, 2018 confirm his previous opinion issued on June 22, 2017, seriously jeopardizing the validity of Benelux trademark no. 0874489 with which Christian Louboutin seeks to obtain exclusive rights in his famous red sole. However, the final decision lies with the District Court of the Hague.
The trademark in question consists of a three-dimensional representation of a shoe with a red sole:
And it is this red color, Pantone® 18 1663TP, in which Christian Louboutin is claiming exclusive rights. The color is undoubtedly the firm’s hallmark – a color that has garnered a legion of followers and has even led to a cosmetics collection. In the designer’s words “the bright red color of the soles has no function other than to identify to the public that they are mine. I selected the color because it’s engaging, flirtatious, memorable, and the color of passion.”
However, the validity of the trademark has been at stake since 2013. The problem arose following an infringement claim filed by Christian Louboutin at the Hague District Court against Van Haren Schoenen BV due to its sale of black high heels with a red sole. The Dutch firm appealed, claiming that the trademark was invalid. The objective was clear. If there is no trademark, there is no infringement. The basis for the invalidity claim was article 3.1.e.iii) of Trademark Directive 2008/95 EC, which states that signs that consist exclusively of the shape that gives substantial value to the goods cannot be registered as trademarks.
The Hague District Court referred the case to the CJEU and asked the court to rule on the interpretation of the prohibition of the Trademarks Directive:
“Is the notion of ‘shape’ within the meaning of Article 3(1)(e)(iii) of Directive 2008/95 … 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 other words, what the District Court is asking is whether the graphic representation of the trademark should be considered the representation of a shape (a shoe with a red sole) or a color trademark (where the shape of the shoe is only included in order to indicate what part of the shoe the color in question is applied to).
It won’t be a speedy decision, since following the first conclusions of the Advocate General Spuznar, the case was reassigned to the Grand Chamber of the CJEU. It is worth mentioning that whereas the CJEU chambers have between three and five judges, the Grand Chamber is comprised of thirteen judges. It appears that Louboutin packs courtrooms as well as fashion shows. Given the importance of the case, following the reopening of the oral procedure, Spuznar was asked to issue a new opinion. As we have said, the Advocate General repeated the previous opinion:
“Article 3(1)(e)(iii) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks is to be interpreted as being capable of applying to a sign consisting of the shape of a product and seeking protection for a certain color. The concept of a shape which ‘gives substantial value’ to the goods, within the meaning of that provision, relates only to the intrinsic value of the shape, and does not permit the reputation of the mark or its proprietor to be taken into account.”
Spuznar considers that Louboutin’s registration is a shape but not a color mark, and as such comes under the prohibition of article 3, 1, e), (iii) of the Directive, since it is a shape that gives “substantial value” to the goods and therefore cannot be registered as a trademark. The purpose of the prohibition is quite simply to prevent a monopoly over shapes that are necessary for the product itself to exist, whose value is in the shape itself and not in its distinctive capacity, which is an essential requirement for the existence of the trademark.
The Advocate General also states that his conclusions are not qualified by the introduction of the “position mark” concept set forth in Implementing Regulation no. 2017/1431. According to Spuznar, it cannot be held on the basis of the Implementing Regulation that a position mark is entirely independent of the shape of the goods, particularly in the case of a sign representing a part or an element of the goods in question.
It is now up to the CJEU to assess the concept of a shape that “gives substantial value” to the product. According to the Advocate General, such an analysis should refer exclusively to the intrinsic value of the shape and should take no account of the reputation of the trademark or its proprietor. Signs are that the final judgement will be long in coming, since the Advocate General takes the view that the classification of the mark at issue is a factual assessment. As such, the decision on the validity of the mark lies with the District Court in The Hague. We will have to wait and see.
Garrigues Intellectual Property Department