25 February 2019
The Christian Louboutin (“CL”) brand is no stranger to a trade mark conflict. In the US, CL successfully appealed a decision that its red-coloured shoe sole was incapable of trade mark protection, with the US Court of Appeals deciding that the mark had acquired a secondary meaning in instances where “the red outsole contrasts with the color of the remainder of the shoe” in 2012.
The red-soled heel dates back to 1992, when a designer borrowed red nail varnish from a store assistant to lather the bottom of the shoe. Since then, the red sole has become associated with CL.
CL had registered the above Benelux mark with the mark 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)”.
Following the (partial) success in the US, CL was also successful in the EU. A dispute had arisen between CL and the Dutch retailer Van Haren (“VH”), which had been selling red-soled footwear. CL sued VH for trade mark infringement and so began a legal battle which would span more than half a decade.
The District Court in the Hague initially issued a default judgment upholding part of CL’s claims, which VH challenged on the basis that CL’s Benelux registration was invalid under the Benelux equivalent of Article 3(1(e)(iii) of the EU Trade Mark Directive 2008/95; VH argued that the mark consisted exclusively of a shape which gives substantial value to the goods.
The Dutch Court referred the matter to the CJEU (Court of Justice of the European Union) and requested clarification as to whether the “shape” to which Article 3(1)(e)(iii) refers is limited to the three-dimensional properties of the goods, or whether it extends to other non-three dimensional characteristics, such as colour.
The CJEU found in June 2018, in a widely reported decision, that the limitation of the registration was key as it noted “while it is true that the shape of the product or of a part of the product plays a role in creating an outline for the colour, it cannot, however, be held that a sign consists of that shape in the case where the registration of the mark did not seek to protect that shape but sought solely to protect the application of a colour to a specific part of that product”. Given that the CJEU determined that the mark did not constitute a shape, the registration did not fall foul of Article 3(1)(e)(iii) and was therefore validly registered.
On account of the CJEU’s decision, the Dutch Court also found that CL’s registration was valid and that VH had infringed it. As a result, CL has been able to stop the further sale of red-soled shoes by VH, whilst a decision regarding any award of costs and damages will be issued in the future.
This case highlights that registered trade mark protection can be a useful tool when seeking to protect less conventional marks. The finding of the CJEU emphasises the level of care which must be taken when seeking to register a mark to ensure that the resulting registration will be valid and enforceable.
Mathys and Squire is well-placed to advise on trade mark protection and enforcement with its specialist trade mark and litigation practitioners. Contact us today for friendly expert advice.
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