Louboutin’s “red sole trade mark” at risk of being invalid
French shoe maker Louboutin’s well-known red sole, which has been registered as an EU trade mark not without difficulty, is now at risk of being found invalid as the Advocate General at the European Court of Justice gave an additional opinion on 6th February 2018 in a case referred to the European Court of Justice by a Dutch court (Louboutin and another v Van Haren Schoenen BV (Case C-163/16)).
Louboutin started trade mark infringement proceedings against a Dutch company known as Van Haren, who launched a collection of high-heeled women’s shoes with red soles in 2012, which appeared very similar to Louboutin’s. As a defence, Van Haren claimed that the red sole trade mark was invalid. Article 3(1) of the 2008 Trade Marks Directive prevents registration as a trade mark of any sign that consists exclusively of a shape that gives substantial value to the goods. The question was whether the concept of “shape” covers not only the three-dimensional properties of goods (such as their contours, measurements and volume) but also colours.
According to the Advocate General, the prohibition set out in the trade mark directive is capable of applying to a sign combining colour and shape, such as Louboutin’s red soles. Moreover, he was doubtful as to whether the colour red can perform the essential function of a trade mark, namely that of identifying the origin of the goods when used separately from the shape of the shoe. The Advocate General was also of the view that the red colour of the sole gave substantial value. He pointed out that the concept of “substantial value” related exclusively to the intrinsic value of the shape; and must take no account of the reputation of the mark or its proprietor.
If this opinion is followed, this could mean that Louboutin will not be able to prevent its competitors, including haute couture houses, from commercialising red soled shoes.
At the opposite end of the market, the footwear brand Crocs has just lost its European design protection for its famous rubber sandals following a decision of the General Court of the European Union, which confirmed a decision of the European Union Intellectual Property Office invalidating the registered design for lack of novelty.
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Cécile de Lagarde is an Associate Solicitor specialising in intellectual property law.