Louboutin trademark case: what you need to know
Tomorrow, an advocate general (AG) at the Court of Justice of the European Union (CJEU) will hand down his opinion on whether Louboutin should be able to register red soles on high-heeled shoes as an EU trademark.
In November, a chamber at the CJEU heard arguments in Case C-163/16, before saying that the dispute raised questions of principle involving EU trademark law, so the case was reassigned to the Grand Chamber.
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 in 2012.
In response, Louboutin claimed that the shoes infringed its trademark for the bright red colour used on the entire surface of the outsole of Louboutin shoes.
According to the CJEU, the shape of the shoe doesn’t form part of the mark but is intended to demonstrate the positioning of the mark. The description of the mark was that the colour red applied to the sole of a shoe as reproduced.
The following year, the District Court of The Hague ordered Van Haren to stop manufacturing high-heeled shoes with red soles because they would infringe Louboutin’s trademark.
Van Haren appealed against the injunction, alleging the mark shouldn’t have been registered because signs consisting exclusively of a shape which gives substantial value to the goods cannot be registered as a trademark.
The Dutch court stayed proceedings pending the CJEU’s answer to the following question: “Is the notion of ‘shape’ limited to the three-dimensional (3D) properties of the goods, such as their contours, measurements and/or does it include other properties of the goods, such as their colour?”
AG Maciej Szpunar handed down his opinion in June last year, finding that the substantial value prohibition may also apply to a sign combining shape and colour.
He added that the reputation of the mark or its proprietor cannot be taken into account when determining whether the shape gives substantial value to the goods.
The question before the court now is whether ‘shape’ is limited to the 3D properties of the goods or whether it includes other non-3D properties of the goods, such as their colour.
Szpunar will issue his opinion tomorrow.
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