On 6 February 2018 the Advocate General (AG) gave the Court of Justice of the European Union (CJEU) his opinion on a question referred from the Dutch court regarding the Louboutin ‘red soles’ trade mark.
Louboutin registered the red soles of its high heels as a trade mark. The registration was challenged in the Dutch courts by a Dutch high street chain, Van Haren, who had been sued by Louboutin for selling high heeled shoes with red soles. During the proceedings a question arose as to the type of trade mark Louboutin had registered and specifically whether it could be classed as a “shape mark”. The distinction is important because a trade mark cannot be registered if it consists exclusively of a shape which “gives substantial value” to the goods covered by the registration.
The Dutch court asked for guidance from the CJEU as to whether “shape” means the 3-D properties of goods or whether it could include other properties such as colour. The AG suggested that the CJEU should conclude that a shape trade mark could comprise the combination of a shape and a colour.
Whilst the CJEU and the AG are not required to determine specifically whether the Louboutin trade mark is a shape mark, the AG did given his view on this point. He stated that he believed that the Louboutin trade mark seeks to protect the application of a colour to a shape (namely the colour red to the shape of a sole of a shoe) and therefore was a shape mark. However, he emphasised that this is ultimately an issue for the Dutch court to determine.
The AG highlighted that it was also for the Dutch court to determine, if the Dutch Court decides that Louboutin’s trade mark is a shape mark, whether that shape trade mark gives “substantial value” to the goods and therefore should not have been registered in the first place. The AG suggests that when making this assessment a court should only consider the intrinsic value of the shape and must not take account of the attractiveness flowing from the reputation of the proprietor of the trade mark. In Louboutin’s case this would mean that the Dutch court should consider whether red soles in and of themselves (ignoring the association with Louboutin) give substantial value to high heels.
We will keep you updated as to what the CJEU decides when its ruling is published and whether Louboutin loses the right to trade mark its red soles when the case returns to the Dutch court.