On 22 June 2017, Advocate-General Szpunar (the "AG") gave his opinion in a dispute between Christian Louboutin ("Louboutin") and Van Haeren Schoenen BV ("Van Haeren") (the "Opinion").
In 2012, Van Haeren started selling high-heeled women's shoes with red soles. Faced with an action by Louboutin on the basis of trade mark infringement, the Rechtbank of Den Haag (the "Court") stayed the proceedings and referred a question for a preliminary ruling to the Court of Justice of the European Union (the "ECJ") with regard to the interpretation of Article 3(1)(e)(iii) of Directive 2008/95/EC to approximate the laws of the Member States relating to trade marks (the "Trade Mark Directive"). This provision states that signs consisting exclusively of a shape which gives substantial value to the goods must not be registered or, if registered, must be declared invalid. Among other things, the Court asked whether the notion of "shape" within the meaning of that provision was limited to the three-dimensional properties of the goods or if it included other (non-three-dimensional) properties of the goods such as their colour.
In his Opinion, the AG first underlined the potential anti-competitive effects of signs that may not be dissociated from the appearance of the goods and the need to keep specific signs in the public domain.
Second, the AG held that the Louboutin trade mark should be considered as a trade mark combining colour and shape, rather than consisting of a colour per se.
As a consequence, the AG examined whether the prohibition of functional signs laid down in Article 3(1)(e) of the Trade Mark Directive applied to signs in which colours are integrated into the shape of the goods. The AG recalled that the purpose of that provision was to prevent trade mark protection from granting its proprietor a monopoly on technical solutions or functional characteristics of a product which a user is likely to seek in the products of competitors. Technical solutions and functional characteristics must be kept in the public domain.
Because Article 3(1)(e) of the Trade Mark Directive only prohibits signs which consist exclusively of functional features, it is settled case-law that this provision does not prevent registration of signs that, although consisting of a shape of a good, also incorporate a significant non-functional element. The AG therefore suggested that it belongs to the national courts to assess whether the colour integrated into a shape is a functional element.
Third, the AG clarified the concept of shapes that "give substantial value" to the goods, given that it is a ground for refusal under Article 3(1)(e)(iii) of the Trade Mark Directive. The AG first recalled that this provision is designed to prevent the monopolisation of external features of goods which are essential to their market success, and thus to prevent that the trade mark protection be used to gain an unfair advantage. However, he added that this provision only applies when the advantage stems from the intrinsic value of the shape and not from the reputation of the trade mark or its proprietor.
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