AG comes out in favour of Louboutin ahead of CJEU TM case
An advocate general at the Court of Justice of the European Union (CJEU) has issued an opinion that Louboutin should be able to register red soles on high-heeled shoes as an EU trademark.
Maciej Szpunar handed down his opinion, as part of the preliminary assessment of the case, on Thursday, June 22.
“I consider that it is necessary to take into account the colour as well as the other aspects of the goods in question,” he said in his opinion.
“The mark should therefore be equated with one consisting of the shape of the goods and seeking protection for a colour in relation to that shape.”
In 2013, Dutch firm Van Haren was ordered by the Dutch District Court of the Hague to stop manufacturing high-heeled shoes with red soles, as the should would infringed Louboutin’s trademark.
Van Haren later appealed against the decision and the Dutch court decided to stay proceedings pending the CJEU’s intervention on the following question:
“Is the notion of ‘shape’ limited to the three-dimensional properties of the goods, such as their contours, measurements and or does it include other properties of the goods, such as their colour?”
In January 2010, Louboutin registered Benelux trade mark No 0874489 for goods in class 25, described as consisting ‘of the colour red applied to the sole of a shoe.’
In April 2013, this was changed to cover just high-heeled shoes, other than “orthopaedic shoes”, according to the claim.
Szpunar quoted article 3(1) (e) (iii) of the European parliament directive which states that a trademark shall not be registered or, if registered, shall be liable to be declared invalid for signs that exist exclusively of the shape which gives substantial value to the goods.
He said it 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 colour,” as part of his final recommendation to the court.
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