The Court of Justice of the European Union (CJEU) has decided in Louboutin v Van Haren Schoenen BV (Case C-163/16), ruling that it cannot be held that a sign consists of a shape where the registration did not seek to protect that shape but rather sought to protect the application of a colour to a specific part of a product.
Christian Louboutin registered a trademark in Benelux for ‘footwear’ in 2010 and for ‘high-heeled shoes’ in 2013 which is described as consisting ‘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).’ They then initiated a trademark infringement action against the Van Haren company for selling high-heeled shoes with red soles, which responded by claiming that the mark is invalid, citing grounds set out in the EU trademark directive. The Netherlands court asked the CJEU, whether the concept of ‘shape’, within the meaning of the directive, 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 colours.
The CJEU issued its decision, taking the view that the trademark directive provides no definition of the concept of ‘shape’, so the meaning of the concept must be determined by considering its usual meaning in everyday language. It added that it does not follow from the usual meaning of that concept that a colour per se, without an outline, may constitute a ‘shape’. The company stated, ‘the protection of Christian Louboutin's red sole trademark is strengthened by the European Court of Justice,’ adding ‘the red colour applied on the sole of a woman's high heel shoe is a position mark, as Maison Christian Louboutin has maintained for many years.’