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12 February 2018Trademarks

Louboutin puts foot down over ‘misleading’ red-sole reports

Designer shoe maker Christian Louboutin has stamped on reports that the opinion of an advocate general (AG) is detrimental to the validity of its signature red-sole trademark.

The shoe designer’s statement, released on Wednesday, February 7, said the opinion is “not a blow or a setback” in protecting its famous red sole.

Maciej Szpunar issued the preliminary opinion in the Court of Justice of the European Union (CJEU) on Tuesday, February 6, WIPR reported.

Louboutin’s signature style is identified by the red colour of the sole of its shoes. The shoe designer registered the style as a trademark in the Benelux region in 2010, and in 2013 applied for the same to also cover high-heeled shoes.

In 2013 the District Court of The Hague enjoined Dutch shoe retailed Van Haren from manufacturing high-heeled shoes with red soles, on the grounds that they infringed Louboutin’s trademark. On appeal, Van Haren claimed the trademark is invalid as it consists exclusively of a shape which gives the goods covered substantial value.

Szpunar’s recent opinion 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.

He expressed doubt as to whether the colour red "can perform the essential function of a trade mark and identify its proprietor where that colour is used out of context, that is to say separately from the shape of the sole”.

Louboutin’s statement seeks “to correct what appear to be misleading reports” that suggest Louboutin’s trademark will be “adversely” affected, according to the release.

Several lawyers told  WIPRthat the opinion is unfavourable to the shoe maker.

The shoe designer said “a close reading of the full opinion of Szpunar in fact supports protection for our famous red sole, rather than threatening it”.

“As for Christian Louboutin’s red colour, the only reason it has value is because of our marketing efforts as well as the public’s association” of a red-coloured sole with the designer, the company said.

According to the release, the reputation of the mark is central to the value placed on the red colour of the sole and the shape of the red sole itself is not intrinsically valuable, a position which Louboutin said is in keeping with the AG’s opinion.

A final decision regarding Louboutin’s trademark has yet to be given by the CJEU, and the shoe designer said it hopes the court will “seize the opportunity to give guidance” to national courts regarding marks which give substantial value to goods.

“The reputation of the mark or of its creator should not affect the validity of this mark,” it explained.

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More on this story

Trademarks
7 February 2018   The Court of Justice of the European Union is likely to follow an opinion issued by an advocate general yesterday, according to lawyers, spelling bad news for luxury brand Christian Louboutin and non-traditional trademarks.
Trademarks
14 November 2017   This morning, the Court of Justice of the European Union is hearing arguments over whether Christian Louboutin should be able to trademark red soles on high-heeled shoes.