Last week the Court of Justice of the European Union (the “ECJ”), held that Christian Louboutin’s red soles on his high heels were a position trade mark and not a shape mark.
The reference to the ECJ called into question the definition of a shape mark within the meaning of 3(1)(e)(iii) of Trade Marks Directive 2008/95/EC (the “Trade Mark Directive”), asking whether this meant only three dimensional qualities like line and contours, or two dimensional properties like colour as well.
Christian Louboutin, the shoe designer recognised for his distinctive red soled heels, applied to trade mark his creation in 2009 and was granted a Benelux trade mark for “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)’, and in 2013, this was limited to high heels.
Van Haren, a Dutch shoe retailer was selling high heels with red soles and Christian Louboutin successfully brought trade mark infringement proceedings.
In response, Van Haren applied to invalidate the mark under Article 3(1)(e)(iii) of the Trade Mark Directive, on the grounds that the mark was exclusively “the shape which gives substantial value to the goods”, arguing the mark was a two dimensional shape mark consisting of colour.
The ECJ reference was to consider the term “shape” and consider whether it applies to solely three dimensional or includes two dimensional qualities.
Case law had not defined a colour, being on its own and without limitation to prescribed boundaries, as a shape. Whilst it is recognised that the shape of a product did constitute such a limitation, Louboutin’s application specifically excluded the contours and form of the soles, and only sought to protect the application of the colour on the under soles itself.
In that respect, the shape under Article 3(1)(e)(iii) of the Trade Mark Directive did not constitute a shape but an internationally recognised identification code.
Such a finding will not only help Louboutin in his case on validity and infringement in the Hague, but also may provide a wider protection for business owners looking to register colours.
Interestingly this decision considers 3(1)(e)(iii) of the Trade Mark Directive soon to be replaced by Article 4(1)(e)(iii) of Directive 2015/2436, which maintains the wording under the Trade Mark Directive, but includes “or another characteristic” after the word “shape” to read “the shape, or another characteristic, which gives substantial value to the goods”.
This may spell out uncertainly under the new regime which comes into force 15 January 2019 and may well have reversed the ECJ’s decision should the new legislation have been applied.