The Court of Justice of the European Union (“CJEU”) handed down an eagerly awaited decision in a dispute about Christian Louboutin's “red sole mark” which is pending before the District Court of The Hague (NL). With its judgment rendered on 12 June 2018 (to be found here), the CJEU clarified that if a sign is meant only to protect the application of a certain colour to a specific part of a product (so not the shape of the colour's outline or the product itself), such sign does not consist of a “shape” as meant in Article 3(1)(e)(iii) of the Trademark Directive (Directive 2008/95/EC). That Article provides that a trade mark is liable to be declared invalid if it “consists exclusively of the shape which gives substantial value to the goods”. But it is now clear that a sign consisting of the colour red applied to the sole of a high-heeled shoe, as shown in Louboutin's trade mark, cannot be invalidated on that particular ground. The referring District Court of the Hague will have to take it from here.
The registration contains the following description: ‘The mark consists 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)’ and the goods for which it is registered are limited to high-heeled shoes.
The CJEU's preliminary ruling was requested in the course of infringement proceedings between, on the one hand, shoe designer Mr Christian Louboutin and Christian Louboutin SAS (together, “Louboutin”) and, on the other, shoe retailer Van Haren Schoenen B.V. (“Van Haren”) concerning the sale, by Van Haren, of shoes which allegedly infringe the red sole mark. In these proceedings, Van Haren claimed that Louboutin's mark is invalid on the basis of Article 2.1(2) of the Benelux Conventionon Intellectual Property, which implements Article 3(1)(e)(iii) of the Trademark Directive. The District Court of The Hague was unsure whether the concept of “shape”, within the meaning of these provisions, also covers properties that are not three-dimensional (such as the colour) or whether it is limited only to three-dimensional properties of a product, such as its contours, measurements and volume. This is why it asked the CJEU for guidance on the issue.
CJEU preliminary ruling
As regards the meaning of the concept of “shape” the CJEU stated that, lacking a definition in the Trademark Directive, this must be determined by considering its usual meaning in everyday language, taking into account the context in which it occurs. Now in the context of trade mark law, the concept of “shape” is usually understood as a set of lines or contours that outline the product concerned. Thus, a colour per se, without an outline, does not constitute a “shape”. But also in the case of a particular colour, applied to a specific part of a product (and thus creating an outline for the colour), it cannot be held that the sign in question consists of that shape when the trade mark owner did not seek to protect that shape when registering the sign but sought solely to protect the application of a colour to a specific part of that product. With this answer, the CJEU departed from the Opinion of the Advocate General (to be found here).
It is clear that the description included in the registration, which explicitly states that the contour of the shoe does not form part of the mark, played an important role in the CJEU's decision. According to the CJEU, this description shows that the contour of the shoe is intended purely to show the positioning of the red colour covered by the registration. Therefore, Louboutin's red sole mark, the main element of which is a specific colour designated by an internationally recognised identification code according to the CJEU, cannot be regarded as consisting (exclusively) of a shape.
A lot depended on the CJEU's answer, because the District Court of The Hague already found that the red sole does in fact give substantial value to the shoes marketed by Louboutin since ‘that colour forms part of the appearance of those shoes and plays an important role in a consumer’s decision to purchase them’. Had the CJEU's answer been any different, the red sole mark may well have been liable to be declared invalid.
If anything, the findings of the CJEU underline the importance of including an explicit description of what it is you want to protect when applying for a trade mark of the same type as the red sole mark. It does help if the scope of protection of the mark one seeks to register is clearly delimited.
However, it should also be noted that Trademark Directive 2008/95 has in the meantime been replaced by Trademark Directive 2015/2436. Under the new law, a trade mark is liable to be declared invalid if it consists exclusively of ‘the shape, or another characteristic, which gives substantial value to the goods’. This new wording could potentially also apply to colours, which means that when filing a new application for such type of mark (i.e. after the transposition of the new Trademark Directive repealing the old), including a proper description is still no guarantee that the mark will be accepted.
Seeing that Louboutin's mark predates the coming into force of the amended Trademark Directive (which is yet to be implemented into Benelux law ultimately on 14 January 2019), we expect that the District Court of The Hague will not have the opportunity to assess the new wording in relation to the red sole mark. We have strong reasons to assume that the new grounds in question cannot be applied retroactively to already existing marks, for instance because this would seem contrary to the principles of legal certainty and the protection of legitimate expectations of trade mark owners, such as Louboutin. It is to be hoped though, that we will not have to wait too long before the first ruling on this interesting topic is issued.
(Note: NautaDutilh acted for Van Haren in the first round of interim proceedings in 2013.)