On 12 June 2018, the Court of Justice of the European Union (the "ECJ") handed down a judgment in response to a request for a preliminary ruling from the District Court of The Hague (Rechtbank Den Haag) concerning a trade mark consisting of the colour red applied to the sole of a shoe (Case C-163/16, Christian Louboutin and Christian Louboutin SAS v Van Haren Schoenen BV).
The case concerned a Benelux trade mark registered by Mr. Louboutin, a well-known shoe designer, for footwear (in 2010) and high-heeled shoes (in 2013). The trade mark consisted of "the colour red (Pantone 18-1663 TP) applied to the sole of a shoe" and was graphically represented as follows, with the proviso that "the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark":
Mr. Louboutin brought proceedings in the Netherlands against Van Haren Schoenen BV ("Van Haren"), claiming that their selling of non-Louboutin red-soled shoes infringed his trade mark. Van Haren claimed that Mr Louboutin's trade mark was invalid pursuant to Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (the "Trade Mark Directive"). Article 3(1)(e)(iii) of the Trade Mark Directive provides that registration of a trade mark may be refused or that a trade mark may be declared invalid if it consists "exclusively of [a] shape [...] which gives substantial value to the goods". Given that the trade mark at issue was inextricably linked to its appearance on the sole of a shoe, the District Court of The Hague sought guidance as to whether the concept of a shape should be limited to three-dimensional qualities or could also include other characteristics such as colours.
In its judgment, the ECJ noted that the Trade Mark Directive does not define the concept of 'shape'. Instead, a definition must be provided by considering the usual meaning of the word 'shape' in everyday language. On these grounds, the ECJ held that a colour alone (that is, a colour without an outline) cannot constitute a 'shape'. This is especially so when the colour at issue is designated by an internationally recognised code such as Pantone Matching System.
The ECJ elaborated its reasoning, holding that, even if the shape of a product (such as the sole of a shoe) plays a role in creating an outline to contain a colour, it does not follow that a sign consists of that shape in cases where the registration of the mark does not seek to protect that shape but only seeks to protect the application of a colour to a specific part of the product. In the case at hand, therefore, Mr Louboutin's trade mark did not relate to the shape of the sole, as the description of the trade mark clearly stated that the contour of the shoe was intended purely to show the positioning of the trademarked red colour.
In finding that the trade mark consisted of a colour per se and, hence, was not a sign consisting exclusively of the shape of the goods, the ECJ concluded that the grounds for refusal or invalidity of registration laid down in Article 3(1)(e)(iii) of the Trade Mark Directive did not apply to Mr. Louboutin's red sole trade mark. It thus also rejected the opinions of Advocate General Szpunar of 22 June 2017 and 6 February 2018 (See VBB on Belgian Business Law, Volume 2017, No. 6, pp. 10 and 11; and Volume 2018, No. 2, pp. 7 and 8, available at www.vbb.com).
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