Advocate general issues bad news to Louboutin over red-sole TM
An advocate general (AG) has said that the combination of a colour and a shape may be refused trademark protection, in a blow to shoe maker Christian Louboutin.
The opinion was handed down today, February 6.
In 2010, Louboutin registered the trademark in the Benelux region, protecting the signature red colour of the sole of its shoes. In 2013, it applied for the trademark to also cover high-heeled shoes.
Louboutin accused Dutch shoe retailer Van Haren in 2012 of trademark infringement after it sold high-heeled shoes with red soles. Van Haren argued that the trademark was invalid.
Van Haren was enjoined from manufacturing high-heeled shoes with red soles in 2013 by the District Court of The Hague, on the grounds that it infringed Louboutin’s trademark. This decision was appealed by Van Haren, which said the trademark shouldn’t have been registered because signs that consist exclusively of a shape that gives substantial value to the goods cannot be registered.
After arguments were initially heard in the Court of Justice of the European Union (CJEU), the case was reassigned to the Grand Chamber, before AG Maciej Szpunar issued a preliminary opinion on the case.
In his most recent opinion, Szpunar said that the grounds on which the registration of a trademark may be refused or declared invalid can be applied to a sign consisting of the combination of a shape and certain colour.
Szpunar said that the colour in this instance had to be considered in relation to the shape of the sole. He also expressed doubts over whether the colour red can be an identifier of a trademark when the colour is used out of context.
He said that the public’s perception of the shoe sways in favour of the grounds for refusal or invalidity. The deciding factor in the public’s perception is not on the distinction between shape, colour or trademark positions, but rather the identification of the origin of the goods created by the trademark, according to Szpunar.
Elaine O’Hare, senior associate at UK law firm Stevens & Bolton, told WIPR that the opinion will come as a blow to Louboutin.
“If the ruling of the CJEU reflects the advocate general’s recommendation, Louboutin may well lose its red sole trademark once the case goes back before the Dutch national court,” she said.
“The brand will be seriously restricted in being able to protect the red sole as a ‘bade of origin’, and there is a danger that the once-exclusive red soles will no longer be limited to Louboutin shoes.”
O’Hare also said that the case will be of “great interest” to other luxury fashion brands, which may be seeking to protect their own signature shapes or colours.
“It is worth nothing that, even with such a global following, the court will not take into account the massive reputation that Louboutin’s red soles enjoy,” she explained.
“The decision instead hinges on whether this kind of mark is a design feature that risks monopolisation of the market; whether it is an essential characteristic of shoes generally, which should therefore be kept available in the public domain.”
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