CJEU puts their foot down over Louboutin red sole validity
In the IP world, there are some cases which catch the enthusiasm of many and are watched closely, eager with anticipation as to the outcome.
Especially in the EU trade mark world, there has been one case over others which has really divided opinion, in recent times. And it all boils down to the sole of a shoe.
Beginning in 2012, luxury shoe brand Christian Louboutin took aim at Dutch establishment Van Haren claiming trade mark infringement of their registered trade mark in respect a red shoe sole.
Van Haren hit back at this claim, stating that the red sole trade mark was in fact invalid.
The District Court of the Hague referred a question to the Court of Justice for the European Union in respect of the sole, asking if the colour applied to the sole is deemed as a shape, which would render it incapable of trade mark protection.
Many practitioners and academics waded in with their opinions on this, including two opinions of the Advocate General Szpunar.
However, there was one opinion that meant the most and that was the CJEU.
On 12 June, the Court released their decision on the case which is as follows:
As there is no legal definition of shape established, the Court decided to apply the meaning in everyday language.
The Court decided that the mark in question does not relate to a specific shape for the sole of a high heeled shoe as the description for the mark specifies that the contour of the shoe does not form part of the mark but only is there to demonstrate the positioning of the red colour.
In addition, the Court held that in any event a mark cannot be regarded as exclusively consisting of a shape where the main element of the mark is a colour designated by the recognised ID code.
This judgment was obviously greatly received by Christian Louboutin, who released a statement to that effect.
The matter will now be passed back to the Hague Court to confirm validity and proceed with the infringement claim.
It will be interesting to see how this has an effect moving forward, especially as when this case began the law was different to what it is today.
Van Haren has the chance to appeal so this matter may not be over, but for now the suspense has subsided.
If you would like further information on how to protect your brand, please get in touch with The Trademarkroom team.
By Ellis Sweetenham