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This morning, the Court of Justice of the European Union (CJEU) is hearing arguments over whether Christian Louboutin should be able to trademark red soles on high-heeled shoes.
Case C-163/16 was originally assigned to a different chamber, which considered that the dispute raised questions of principle involving EU trademark law, so it was reassigned to the Grand Chamber.
The oral part of the procedure was reopened and the parties were asked to attend the new hearing today, November 14.
In 2012, Dutch shoe shop Van Haren launched the sale of its “Fifth Avenue by Halle Berry” line of high-heeled shoes with a bright red outsole.
According to Louboutin, the shoe infringed its Benelux trademark for the bright red colour used on the entire surface of the outsole of Louboutin shoes.
“The description of the mark was that the colour red applied to the sole of a shoe as reproduced (the shape of the shoe does not form part of the mark but is intended to demonstrate the positioning of the mark),” explained the CJEU in its newsletter on cases being heard.
In 2013, the District Court of The Hague ordered Van Haren to stop manufacturing high-heeled shoes with red soles, as they would infringe Louboutin’s trademark.
Van Haren appealed against the decision, claiming that the mark shouldn’t have been registered because signs consisting exclusively of the shape which gives substantial value to the goods cannot be registered as a mark under Directive 2008/95.
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 June this year, advocate-general Maciej Szpunar handed down his opinion, as part of the preliminary assessment of the case, recommending that Louboutin should be granted a trademark.
The majority of WIPR readers agreed that Szpunar had made the right decision.
This is not the first time Louboutin has had to defend its red sole—back in 2011, the designer ended up in a high-profile US trademark dispute with Yves Saint Laurent.
Louboutin obtained trademark protection for its red-soled shoes combined with different coloured tops, but the court found that the designer could not prevent others from creating red shoes with red soles.
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