10 Aug 2018
Highest EU Court Rules That Well-known Footwear Company’s Red Soles Qualify for Trademark Protection
Earlier this summer, the Court of Justice of the European Union (the CJEU) handed down a judgment in response to a request for a preliminary ruling from the District Court of The Hague in the Netherlands. The case is likely to be interest to Hong Kong sellers of footwear, as it concerns a trademark consisting of the colour red, applied to the sole of a shoe (Case C-163/16, Christian Louboutin and Christian Louboutin SAS v Van Haren Schoenen BV).
The case concerned a Benelux trademark registered by Mr. Louboutin, a well-known shoe designer, for footwear (in 2010) and high-heeled shoes (in 2013). The trademark consisted of “the colour red (Pantone 18-1663 TP) applied to the sole of a shoe” and was graphically represented as follows, with the proviso that “the contour of the shoe is not part of the trademark but is intended to show the positioning of the mark”:
Mr. Louboutin brought proceedings in the Netherlands against Van Haren Schoenen BV (“Van Haren”), claiming that their selling of non-Louboutin red-soled shoes infringed his trademark. Van Haren claimed that Mr Louboutin’s trademark was invalid pursuant to Directive 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trademarks (the “Trademark Directive”).
Article 3 of the Trademark Directive provides that registration of a trademark may be refused, or that a trademark may be declared invalid, if it consists “exclusively of [a] shape […] which gives substantial value to the goods”. Given that the trademark at issue was inextricably linked to its appearance on the sole of a shoe, the District Court of The Hague sought guidance from the highest EU court (the CJEU) as to whether the concept of a shape should be limited to three-dimensional qualities or could also include other characteristics such as colours.
In its judgment, the ECJ noted that the Trademark Directive does not define the concept of ‘shape’. Instead, a definition must be provided by considering the usual meaning of the word ‘shape’ in everyday language. On these grounds, the ECJ held that a colour alone (that is, a colour without an outline) cannot constitute a ‘shape’. This is especially so when the colour at issue is designated by an internationally recognised code such as Pantone Matching System.
The ECJ elaborated its reasoning, holding that, even if the shape of a product (such as the sole of a shoe) plays a role in creating an outline to contain a colour, it does not follow that a sign consists of that shape in cases where the registration of the mark does not seek to protect that shape but only seeks to protect the application of a colour to a specific part of the product.
In the case at hand, therefore, Mr Louboutin’s trademark did not relate to the shape of the sole, as the description of the trademark clearly stated that the contour of the shoe was intended purely to show the positioning of the trademarked red colour.
In finding that the trademark consisted of a colour per se and, hence, was not a sign consisting exclusively of the shape of the goods, the ECJ concluded that the grounds for refusal or invalidity of registration laid down in Article 3of the Trademark Directive did not apply to Mr. Louboutin’s red sole trademark.