On 6 February 2018, Advocate General Szpunar (AG) delivered his second opinion on Christian Louboutin’s shoes trademark. His analysis notes that a trademark combining colour and shape may be refused or declared invalid on the grounds that the trademark at issue gives substantial value to the goods.

By way of background, Christian Louboutin registered trademarks for footwear which were described as the colour red 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 2010 and 2013. Louboutin subsequently brought trademark infringement proceedings in the Netherlands against Van Haren for selling high heels with red soles. The issue was referred by the District Court of the Netherlands to the Court of Justice of the European Union (CJEU) following Van Haren’s counterclaim that the trademark was invalid. The referring Netherlands court stated that the mark at issue was indistinguishably linked to shoe soles and covered the three-dimensional properties of goods (contours, measurements and volume) and colours also.

In his most recent Opinion, the AG sustained his view that the trademark directive (Directive 2008/95) can be applied to a sign combining colour and shape, and such a trademark may be refused or declared invalid on the grounds established under EU trademark law. The Opinion states that prohibitions on the registration of shapes which give substantial value to goods, can apply to shape and colour combinations and the registration of the Christian Louboutin red sole falls into that category. Therefore the Christian Louboutin red sole could be invalid as the sole of the shoe (i.e. the shape) is intrinsically linked to the red colour. However, the AG did note that his analysis relates exclusively to the integral value of the shape and takes no account of attractiveness of the goods flowing from the reputation of the mark.

The CJEU does not have to follow the AG’s opinion but it is likely that one of the key issues to be resolved by the CJEU will be whether the shape and colour combination relates exclusively to the intrinsic value of the shape or whether the appeal of the trademark flows from the reputation of the mark or its proprietor. The matter will now go to a full decision of the CJEU and we will keep you updated in due course.