On 12 June 2018, the Court of Justice of the EU rendered its much-awaited judgement in the case about Louboutin’s red sole trade mark, ruling that this trade mark does not relate to a specific shape of sole for high-heeled shoes since the description explicitly stated that the contour of the shoe does not form part of the trade mark, and is purely intended to show the positioning of the red colour. The CJEU found such a trade mark cannot be regarded as consisting exclusively of a shape.

The case that led to referral to the CJEU was initiated by Louboutin against Van Haren in the Netherlands. Louboutin sued Van Haren for infringement because it sold high-heeled women’s shoes with red soles. Van Haren counterclaimed that Louboutin’s red sole trade mark was invalid because it consisted exclusively of a shape that gave substantial value to the goods, which was one of the three absolute grounds for trade mark refusal of shapes. Since the creation of the new Trade Mark Package, these three refusal grounds also apply to “another characteristic” and are not limited to “a shape” only, but at the time only shapes could be refused trade mark protection based on these refusal grounds.

Hence, the pivotal question was whether Louboutin’s red sole trade mark consisted exclusively of a shape.

If it did, the court had to examine whether this red sole shape gave substantial value to the high-heeled shoes, in which case Louboutin’s trade mark would be invalid, and there could be no infringement.

If it did not, the trade mark would not fall within the absolute ground for refusal of a shape, meaning that the courts would not have to examine whether the red sole gave substantial value to high-heeled shoes. In this case, the courts would still have to examine wether the red sole trade mark had a distinctive character. If the answer to that question was positive, there could be infringement.

To determine this, the Dutch Court decided to refer a preliminary question to the CJEU. Interestingly, shortly before, the Brussels Court of Appeal had already answered this question in a similar case involving Louboutin. The Brussels court decided that Louboutin’s red sole trade mark was not a shape trade mark. The court then ruled that the trade mark had a distinctive character, and found for infringement.

The CJEU has now decided that Louboutin’s red sole trade mark is not a shape trade mark.

It is expected that the Dutch court will now rule that Louboutin’s trade mark is valid, and confirm the infringement.

Analysts eagerly await to see how a new and similar case would be dealt with under the new Trade Mark Package. The question in a future case: Louboutin’s red sole is not a shape, but is it another characteristic, which can now also be excluded from trade mark protection if it gives substantial value to the goods?

CJEU, 12 June 2018, C-163/16, www.curia.eu