Abigail Nicholls discusses the recent dispute over Louboutin’s trade marked red sole.Since 2010 Louboutin has owned a Benelux trade mark registration for footwear, later limited to high-heeled shoes, which includes the iconic red sole famously associated with the brand.In 2013 Louboutin used this registration against Dutch retailer Van Haren, who also sold high-heeled shoes with red soles. They obtained a preliminary injunction to prevent the manufacture and sale of the red-soled shoes by Van Haren.Van Haren appealed this decision and also challenged the validity of the trade mark. They argued that it is an invalid 2D shape mark and that the colour gives the shape substantial value, so should not be protected. The following question was referred to the Court of Justice of the European Union:“Is the notion of ‘shape’ within the meaning of Article 3(1)(e)(iii) of Directive 2008/95 … limited to the three-dimensional properties of the goods, such as their contours, measurements and volume (expressed three-dimensionally), or does it include other (non three-dimensional) properties of the goods, such as their colour”Advocate general AG Szpunar issued a preliminary opinion in June, stating that there should be an overall assessment, taking both the shape and colour together. The rules do not prevent the registration of a mark which includes a non-functional element, although an assessment of the mark as a whole may bring the mark into the prohibition in Article 3(1)(e)(iii). This may be bad news for Louboutin, which is awaiting the judgment.An interesting element of the opinion was that the reputation of the mark and its owner should not be taken into account when assessing whether a shape gives substantial value to the goods.For any questions or further information please contact Abigail Nicholls.