A sign or feature does not consist exclusively of a shape if its main element is a specific colour “designated by an internationally recognised identification code”. The ECJ has upheld a claim by Christian Louboutin for infringement of its trade mark which sought to protect the application of a colour to a specific part of its product. Christian Louboutin’s trade mark was judged not to be an invalid shape mark.

What led to the ruling?

Shoes made by high-end shoe designer, Louboutin, always bear a distinctive red outer sole – the defining feature of his shoes for more than a quarter of a century. Louboutin took proceedings for trade mark infringement against Dutch rival company (Van Haren), which also sold high heeled shoes bearing red soles.

Under EU trademark law, registration of a trade mark may be refused, or declared invalid, if the sign consists exclusively of a shape that gives substantial value to the goods. The Dutch court referred the issue of whether the concept of ‘shape’ is limited solely to three-dimensional properties of a product, such as its contours, measurements and volume, or whether that concept also covers other characteristics such as colour.

Unusually, the ECJ did not follow the earlier recommendation of the EU’s Advocate General that a trade mark combining colour and shape may be refused or declared invalid under EU trade mark law

Instead, the ECJ noted that the trade mark directive does not give a definition of the concept of ‘shape’, therefore, the meaning of that concept must be determined by considering its usual, everyday meaning. In this case, the Louboutin mark does not relate to a specific shape of sole for high-heeled shoes since the description of that mark explicitly states that the contour of the shoe does not form part of the mark – it is intended purely to show the positioning of the red colour covered by the registration.

In any event, said the ECJ, a sign cannot be regarded as consisting ‘exclusively’ of a shape, “where the main element of that sign is a specific colour designated by an internationally recognised identification code”. The case will now be referred back to The Hague Court which is expected to confirm the validity of the red sole trademark.

The ruling is important for businesses whose products are defined by a colour or other specific characteristic of an actual shape. The ECJ has essentially confirmed that ‘colour’ is not the same as ‘shape’ for these purposes.