• Claim that the trade mark protecting the famous red sole of Christian Louboutin high-heeled shoes should be declared invalid
  • Consideration of the rule that signs consisting exclusively of a shape cannot be validly registered as a trade mark
  • Analysis of a trade mark consisting of a colour applied to the sole of a shoe

What's it about?

In 2009, Christian Louboutin (Louboutin) filed an application for registration of a Benelux trade mark, which was duly registered in 2010. The application described the mark as consisting of the colour red (Pantone 18-1663TP) as applied to the sole of a shoe. The application included a diagram of the shoe to show this, stating that the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark. Under EU trade mark law, trade marks cannot be validly registered if they consist exclusively of the shape of a product (Article 3(1)(e)(iii) Directive 2008/65/EC).

In 2013, Louboutin issued infringement proceedings in the Netherlands against a Dutch retailer selling red-soled high-heeled shoes. The retailer argued that Louboutin's trade mark is invalid on the basis that it consists solely of a shape.

Accordingly, the Dutch court referred the matter to the CJEU, seeking clarification on whether the concept of a 'shape', within the meaning of Article 3, is limited to three-dimensional properties of a product, for example its contours, measurements and volume, or whether it also includes non-three-dimensional properties, such as its colour.

Why does it matter?

The CJEU noted that as the Directive does not provide a definition of a 'shape', it was required to determine the meaning by reference to everyday language, as well as the context in which it occurs. Crucially, Louboutin had not sought trade mark protection for the specific contours of the sole of its shoe design. The CJEU found in Louboutin's favour, concluding that a sign consisting of a colour applied to the sole of a shoe does not consist exclusively of a shape. Also relevant to its decision was that the main element of the sign is a colour designated by an internationally-recognised code, which meant that the sign could not be regarded as constituting 'exclusively' of a shape.

Now what?

This ruling provides welcome reassurance to brand owners that signs consisting of colours (when used on specific products) will not automatically fall foul of the requirement that a trade mark must not consist exclusively of a "shape".

Christian Louboutin, Christian Louboutin SAS v Van Haren Schoenen BV, Case C-163/16