Christian Louboutin wins bid to protect red sole TM
French fashion designer Christian Louboutin has scored a victory in its long running trademark dispute with a Dutch footwear brand over the use of red soles on women’s shoes.
In a decision issued yesterday, February 6, by The Hague District Court, Dutch retailer Van Haren was deemed to have infringed Louboutin’s trademark for its distinctive red-soled shoes, while the Dutch company’s bid to have the Benelux trademark registration invalidated was rejected.
The object of the dispute was Van Haren’s red-soled high heeled shoes, which Louboutin said was causing confusion amongst consumers as to the true origin of the products.
The Dutch court referred the case to the Court of Justice of the European Union (CJEU) in 2016, requesting clarification on whether Benelux IP law prevented the shape of the red sole from being registered as a trademark.
In its judgment issued last year, the CJEU ruled that the distinctive red colour of the sole qualified it as eligible for registration, as the mark does not consist exclusively of the “shape” of the product.
The CJEU cited article 3(1)(e)(iii) of the now-obsolete Directive 2008/95/EC, which said that if it is only the shape of a product “which gives substantial value to the goods”, then the mark can be invalidated.
The new Directive (EU) 2015/2436 on trademarks has widened the scope of the law with respect to invalidating registrations to include characteristics other than just the shape of a product.
Although this could potentially include colour, the Dutch court said that as the new directive had not yet been transposed into Benelux legislation, it could not be a decisive factor in the case.
The court ordered Van Haren to cease all use of the mark, and awarded damages and costs to Louboutin.
In a statement sent to WIPR, Van Haren said that it had “taken note of the verdict” and was currently reviewing whether it would appeal.
WIPR has contacted Christian Louboutin for comment.
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