ECJ in Christian Louboutin Trademark Case: Shape of a product does not include its colour

European Court of Justice: In May 2013, Christian Louboutin initiated proceedings before the District Court, The Hague, Netherlands, claiming that Van Haren had infringed the mark at issue. In July 2013, that Court delivered a default judgment upholding in part the claims of Christian Louboutin. Van Haren challenged that judgment before the referring court, the District Court, The Hague, claiming that the mark at issue was invalid on the basis of Article 2.1(2) of the Benelux Convention on Intellectual Property (Trade Marks and Designs). Legal battle over trademarking Louboutin’s signature red-soled high-heeled shoes centred on whether his trademark involved a shape or a colour.

Article 3 of Directive 2008/95 provides grounds for refusal or invalidity of trademark on the grounds inter alia if the sign consist ‘exclusively’ of the shape which results from the nature of the goods themselves or which is necessary to obtain a technical result or which gives substantial value to the goods. Similar limitations on trademarks are laid in of Article 2.1(2) of the Benelux Convention. In the application for registration, the mark at issue is described as follows: ‘The mark consists of the colour red (Pantone 18-1663TP) applied to the sole of a shoe as shown (the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark)’.

In the context of trade mark law, the concept of ‘shape’ is usually understood as a set of lines or contours that outline the product concerned. The question before the Court was whether the fact that a particular colour is applied to a specific part of the product concerned results in the sign at issue consisting of a shape within the meaning of Article 3(1)(e)(iii) of Directive 2008/95. While pointing out that no definition of ‘shape’ has been provided in the directive the Court found that its meaning has to be understood by considering its usual meaning in everyday language.

Court noted that while it was true that the shape of the product or of a part of the product plays a role in creating an outline for the colour, it cannot, however, be held that a sign consists of that shape in the case where the registration of the mark did not seek to protect that shape but sought solely to protect the application of a colour to a specific part of that product. It ruled that Article 3(1)(e)(iii) of Directive 2008/95/EC of European Parliament relating to trade marks must be interpreted as meaning that a sign consisting of a colour applied to the sole of a high-heeled shoe does not consist exclusively of a ‘shape’, within the meaning of that provision. The Court in The Hague will deliver the final ruling on the matter based on the ECJ decision. [Christian Louboutin SAS v. Van Haren Schoenen BV, [2018] Bus LR 1411, order dated 12-06-2018]

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