On 12 June 2018, the Court of Justice of the European Union (CJEU) departed from the norm and disagreed with the conclusions of the Advocate General (AG) regarding the question of whether a Christian Louboutin trade mark registration could be disregarded under Article 3(1)(e) of the Trade Marks Directive.

Background

This highly anticipated decision relates to an invalidity action against Louboutin's 2010 Benelux registration for a particular shade of red applied to and visible on the sole of their shoes. The 2010 registration refers to "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)".

Contrary to the AG’s view, the CJEU concluded that a mark consisting of a colour applied to the sole of a shoe is not covered by the prohibition of the registration of shapes (Article 3(1)(e)) of the Trade Marks Directive. This is because the mark does not consist "exclusively of a shape". To the delight of Louboutin and the wider fashion industry, the mark remains valid.

The basis for the decision

13 Judges of the Grand Chamber of the CJEU found that because the Trade Marks Directive provides no definition of the concept of 'shape', the meaning and scope of that concept must be determined by considering its usual meaning in everyday language, while also taking into account the context in which it occurs and the purposes of the rules of which it is part. The CJEU said that it did not follow the usual meaning of 'shape' that a colour, without an outline, may constitute a 'shape'. The shape of the product or of a part of the product plays a role in creating an outline for the colour. However, it cannot be determined 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.

This mark does not relate to a specific shape of sole for high-heeled shoes. This is due to the fact that the written description of that mark specifically states that the contour of the shoe does not form part of the mark and is intended purely to show the positioning of the red colour covered by the registration.

In any event, the main claim of the Louboutin trade mark relates to a particular red colour which can be understood by reference to an internationally recognised identification code or Pantone. On the basis of the this logic, the CJEU concluded that a colour trade mark such as this could not be regarded as consisting 'exclusively' of a shape.

Conclusion

The decision is, of course, welcome news for Louboutin and the broader fashion industry. The matter will now be referred back to The Hague District Court to make a final decision and it is anticipated that the Court will follow the CJEU’s conclusion.

In a broader sense, the decision provides useful guidance for EU traders and practitioners in relation to the registration of colour trade marks. The decision gives confidence that an application for a colour mark framed in line with this guidance will stand a strong chance of proceeding to registration and be sufficiently robust to discourage invalidity challenges. Applicants and practitioners are advised to abide by the CJEU’s guidance and include at least the following in colour trade mark applications:

  • A description of the colour by reference to an internationally recognised colour code ie a Pantone code, as well as
  • A description of the mark clarifying that the contour/shape of the item is not part of the application but is simply intended to show the positioning of the mark