High hopes for Louboutin after AG opinion?
On February 6, Advocate General (AG) Maciej Szpunar issued an opinion in the Christian Louboutin trademark case, finding that a trademark combining colour and shape may be refused or declared invalid under EU trademark law.
Since then, some commentators have claimed the decision is unfavourable to the shoe designer, and the company issued a statement complaining about misleading reports and saying that “a close reading of the full opinion of Szpunar in fact supports protection for our famous red sole, rather than threatening it”.
Neither the initial ruling nor the latest opinion of Szpunar immediately threaten Louboutin’s protection of its red sole mark. Should the Court of Justice of the EU (CJEU) follow the AG’s reasoning, that does not mean that Louboutin’s mark would be annulled per se. The AG opined that Louboutin’s mark could be annulled if it were determined that the red sole mark consists exclusively of a shape which gives substantial value to the goods. But that is an issue which must be assessed by the referring court, ruling on the merits.
According to the Community Trademark Directive applicable at the time Louboutin filed its trademark application, trademarks are invalid if the mark consists exclusively of a shape which gives substantial value to the goods. The AG considered that this exclusion ground is not limited to three-dimensional properties of the goods but also applies to signs consisting of the shape of the goods and seeking protection for a colour in relation to that shape.
The AG determined that it is not decisive that Louboutin claims no protection for a specific contour of sole to be considered as a mark consisting exclusively of a shape. Accordingly, it is not the contour of the sole, but the unusual positioning of the red colour that would give the mark its distinctive character. Such an interpretation could, however, result in an overly extensive protection of Louboutin’s mark, allowing it to claim protection against a variety of shoes which have similar red soles.
Louboutin insisted during proceedings that its red sole mark is a “position mark” and therefore does not consist exclusively of the shape of the product. The AG was correct to argue that no specific legal consequences are given to Louboutin’s classification, even in light of the introduction of Implementing Regulation 2017/1413. The new regulation defines only how a position mark should be represented; it does not prevent the same mark from also being caught by the shape mark exclusions.
