The Court of Justice of the European Union rules that Louboutin red sole mark does not fall within absolute ground for refusal

31.07.2018 |

The Court of Justice of the European Union (CJEU) has issued on 12 June 2018 its much-awaited judgment in Louboutin C-163/16, ruling that a mark consisting of a colour applied to the sole of a shoe is not covered by the prohibition of the registration of shapes. Such a mark does not consist ‘exclusively of the shape’.

In the application the Louboutin mark is 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)’.

The case initially started in the Netherlands. Louboutin sued a shoe manufacturer who produced high heels with a red coloured sole. Louboutin won the first instance by default judgement. The defendant appealed and the Rechtbank Den Haag went to the CJEU with the following question:

Is the noion of ‘shape’ within the meaning of Article 3(1)(e)(iii) of [the 2008 Trade Mark Directive, ie the absolute ground for refusal concerning signs consisting exclusively of "the shape which gives substantial value to the goods"] (‘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 colour?

As it is remembered the case featured: a first Opinion of Advocate General (AG) Szpunar ; the reopening of the oral procedure and the assignment of the case to the Grand Chamber, so that the CJEU would rule with a greater (13) number of judges than the ordinary chamber procedure (3 or 5 judges), on consideration of the topicality of the issues underlying this reference for a preliminary ruling; and a second Opinion of AG Szpunar which has left some controversy regarding its actual interpretation

The text of the CJEU’s judgment says:

“In today's judgment, the Court takes the view that, since the trade mark directive provides no definition of the concept of ‘shape’, the meaning of that concept must be determined by considering its usual meaning in everyday language. The Court points out that it does not follow from the usual meaning of that concept that a colour per se, without an outline, may constitute a ‘shape’.

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 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.

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 colour 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 colour designated by an internationally recognised identification code."

However, the judgement of the CJEU will be reasoned, one aspect crops out and will make fashion-lovers feel relieved: As the Louboutin mark does not fall into absolute grounds of refusal, the Louboutin will be the only ones with a red coloured sole as long as the mark exists.

Sebastian Ober