An eagerly awaited decision of the Court of Justice of the European Union (“the CJEU”) was handed down on 12 June in a long-running dispute between Mr Christian Louboutin and Christian Louboutin SAS (together, “Louboutin”) and Van Haren Schoenen BV (“Van Haren”), a Dutch shoe retailer.
In 2010, Louboutin obtained a Benelux registration for the following trade mark (“the red sole mark”):
The goods covered by the registration were “footwear (other than orthopaedic footwear)” in Class 25. However, the specification was limited to “high-heeled shoes (other than orthopaedic shoes)” in 2013.
Importantly for the CJEU’s decision, the following description was included in the application for registration: “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)”:
In 2013, Louboutin brought infringement proceedings against Van Haren in the Netherlands, over Van Haren’s sale of women’s shoes with red soles. Louboutin claimed these activities infringed the red sole mark.
Louboutin’s claim was upheld in part by the Court. However, Van Haren challenged the decision, claiming that the red sole mark was invalid on the basis that it consisted “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”. A trade mark registration that falls foul of any one of these provisions is not capable of being a trade mark and is, therefore, invalid.
The Netherlands Court stayed the proceedings and referred a question to the CJEU concerning the interpretation of Article 3(1)(e)(iii) of Directive 2008/95, which provides that a trade mark is liable to be declared invalid if it “consists exclusively of the shape which gives substantial value to the goods”.
The question referred was as follows:
“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 colour?”
Essentially, the question asked was whether a trade mark consisting of a colour applied to the sole of a high-heeled shoe, such as the red sole mark at issue, consists exclusively of a “shape”. If the answer is yes, then the specific provisions in the Trade Marks Directive relating to the requirements for shape marks apply and the red sole mark could potentially be caught by the “substantial value” objection.
This is the question that has been answered by the CJEU in the present judgment.
In its decision, the CJEU noted that Directive 2008/95 provides no definition of the concept of “shape” and, therefore, what constitutes a “shape” must be determined by considering its usual meaning in everyday language, taking into account the context in which it occurs.
On this basis, the CJEU held that the concept of “shape” in the context of trade mark law is usually understood as a set of lines or contours that outline the product concerned.
A colour per se, without an outline, does not therefore constitute a “shape”, but the relevant question in this case was whether a particular colour, applied to a specific part of a product, does. In essence, the CJEU’s answer was, no.
Although, in this case, the shape of part of the product plays a role in creating an outline for the colour, the CJEU stated that it cannot be held that a sign consists of that shape 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. Indeed, the description included in the application for registration explicitly states that the contour of the shoe does not form part of the mark. Instead, the main element of the trade mark is a specific colour.
In answering the question referred, the CJEU therefore held that “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, does not consist exclusively of a “shape”, within the meaning of that provision.
The case will now be referred back to the Netherlands Court, which will apply the guidance of the CJEU and rule on whether the red sole mark is a valid trade mark.
The findings of the CJEU are perhaps not surprising given the explicit description included in the red sole mark, which delimits the scope of protection of the mark, although the decision did depart from the Opinion of The Advocate General.
However, now that Directive 2008/95 has been replaced by Directive 2015/2436, and depending on the decision of the Netherlands Court, it remains to be seen whether Van Haren will challenge the validity of the red sole mark under the new law, which broadens the scope of the old Article 3(1)(e)(iii).
Under the new law, a trade mark is liable to be declared invalid if it consists exclusively of “the shape, or another characteristic, which gives substantial value to the goods”. This new wording could potentially apply to colours but, as there is no case law in this area yet, we shall sadly need to wait for the answer.