Louboutin's red sole - Shape or Colour Trademark?

The famous court case held between Christian Louboutin and Van Haren Schoenen, in the District Court of The Hague, Netherlands, in which the Louboutin’s red sole validity as a Benelux trademark is being questioned, has suffered a setback.

The District Court of The Hague requested for a preliminary ruling from CJEU and Maciej Szpunar, the Advocate General, has delivered the opinion on the case on June 22, 2017.

The discussion relies on the definition of article 3(e)(iii) of Directive 2008/95/EC, which determines that a registered trademark shall be liable to be declared invalid if the sign consists exclusively of the shape which gives substantial value to the goods.

The question of whether a colour may be included in the definition of shape will be easily solved after January 14th 2019, time when Directive 2015/2436/EU becomes in force, considering that article 4(1)(e) of the new Directive will determine that a registered trademark shall be liable to be declared invalid if the sign consists exclusively of the shape, or another characteristic, which gives substantial value to the goods.

However, the question is being raised today and therefore the answer to on whether a colour is a shape for the purposes of article 3(e)(iii) of Directive 2008/95/EC, namely, if the notion of shape in the different versions of the Directive assumed by the countries (‘Form’, ‘vorm’ and ‘forme’ in the German, Dutch and French language versions) is limited to three dimensional products, specifically the measurements, volume and the contours of the same, or if, on the contrary, includes two dimensional products, such as the colour of the same.

The answer to this question will determine if Louboutin’s red sole trademark will become invalid, as if the Court rules that the colour is a shape within the purposes of the Directive, the trademark falls under the provision of article 3(e)(iii) and should be declared invalid.

For now, the Advocate General is of the opinion that the wording of the new Directive, namely the "the shape, or another characteristic, of the goods" does not represent a change of the law as it is a clarification of the existing law.

In addition, it is mentioned that “the analysis relates exclusively to the intrinsic value of the shape, and must take no account of attractiveness of the goods flowing from the reputation of the mark or its proprietor” and that “Article 3(1)(e)(iii) (…) is to be interpreted as being capable of applying to a sign consisting of the shape of a product and seeking protection for a certain colour. The concept of a shape which ‘gives substantial value’ to the goods, within the meaning of that provision, relates only to the intrinsic value of the shape, and does not permit the reputation of the mark or its proprietor to be taken into account.”

This seems bad news for Louboutin and in the circumstance CJEU follows the opinion of the Advocate General, the French designer will have to face the invalidity of the red sole trademark in Benelux.