On June 12, 2018, the CJEU ruled (C-163/16) that the red sole of Louboutin shoes can be protected as a trademark.

The decision is based on a dispute between luxury shoe designer Louboutin and Deichmann subsidiary Van Haren. Christian Louboutin, who designs high-priced women’s shoes with a red sole, had a high-heeled shoe featuring a red sole registered as a trademark and described it as follows: “The mark consists of 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)”. Van Haren offered women’s shoes with red soles in its Dutch stores. Louboutin then initiated proceedings before the Dutch courts claiming that Van Haren had infringed the mark at issue. Van Haren challenged that judgement, claiming that the mark should not have been registered because it consisted exclusively of a shape giving the goods its substantial value (ground of invalidity under Article 3(1)(e)(iii) of Directive 2008/95/EC (Trade Mark Directive)). The Dutch court stayed the case and referred the question to the CJEU whether the notion of ‘shape’ was limited to the three-dimensional properties of the goods, such as their contours, measurements, and volume, or whether the provision also included other properties of the goods, such as their color. In his Opinion, the Advocate General had argued that there was no trademark protection for the red sole.

The CJEU did not join the Opinion of the Advocate General, as is usually the case, but granted trademark protection to the red sole. The CJEU ruled that the ground for refusal of registration put forward by Van Haren was not relevant. The Directive provided no definition of the concept of ‘shape’ and its usual meaning in everyday language had to be taken into account. It did not follow from the usual meaning of that concept that a color per se, without an outline, may constitute a ‘shape’. Although the shape of the product or a part of the product plays a role in creating an outline for the color, it cannot be held that a sign consists of that shape if the registration of the mark did not seek to protect that shape but sought solely to protect the application of a color to a specific part of that product. Moreover, the mark does not relate to a specific shape of sole for high-heeled shoes since the description of that mark expressly states that the contour of the shoe does not form part of the mark but is intended purely to show the positioning of the red color covered by the registration.

As a result, a sign consisting of a color applied to the sole of a shoe is not covered by the prohibition on the registration of shapes and does not consist exclusively of the ‘shape’ within the meaning of the Directive.

The fashion industry is pleased to note that, as a consequence, trademark protection for colored products is not impeded as previously feared and protection is not restricted, as initially demanded in the Opinion of the Advocate General. After an increasingly restrictive practice, finally a positive decision for the trademark and trademark owners!