Date: 27 September 2018
In the last issue of Make Your Mark, we explored the position taken by the European, German and English courts in relation to shape marks. In contrast, here we have a case where the Court of Justice of the European Union (CJEU) has ruled that a mark consisting of the colour applied to the sole of a highheeled shoe “does not consist exclusively of a shape” and is not covered by the prohibition of the registration of shapes (Louboutin v Van Haren Schoenen BV; C-163/16).
In January 2010, Louboutin obtained the registration of a Benelux trade mark for goods in class 25, namely “footwear (other than orthopaedic footwear)”. In April 2013, the registration was amended to cover “high-heeled shoes (other than orthopaedic shoes)”.
Louboutin’s red sole mark consisted “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 is depicted below:
In the course of 2012, Van Haren (a Dutch shoe retailer) sold highheeled women’s shoes with red soles. Louboutin initiated proceedings before the Rechtbank Den Haag (District Court, The Hague, Netherlands), alleging that Van Haren had infringed the red sole mark. Van Haren challenged the validity of the mark, on the basis that it was a two-dimensional figurative mark that consisted of a red coloured surface.
The Hague District Court did not consider Louboutin’s red sole mark to be a merely 2D mark as the colour red was inextricably linked to the sole of the shoe. Since the mark at issue consisted of a colour applied to the sole of a shoe, it was clearly an element of the goods. However, it was unclear whether the concept of “shape”, within the meaning of Article 3(1)(e)(iii) of the Trade Mark Directive 2008/95 was limited solely to the 3D properties of a product, such as its contours, measurements and volume, to the exclusion of properties that are not 3D, such as colour.
In those circumstances, the Dutch court decided to refer the following question to the CJEU for guidance: “Is the notion of ‘shape’, within the meaning of Article 3(1)(e)(iii) of [Directive 2008/95] (respectively referred to in the German-, [Dutch-] and French-language versions of [that directive] as ‘Form’, ‘vorm’ and ‘forme’), limited to the threedimensional properties of the goods, such as their contours, measurements and volume (expressed three-dimensionally), or does it include other (non-threedimensional) properties of the goods, such as their colour?”
In passing judgment, the CJEU noted that (as had been observed by the German, French and United Kingdom Governments, as well as by the Commission), the mark did not relate to a “specific shape of sole for high-heeled shoes” since the description of the mark explicitly stated that the contour of the shoe did not form part of the mark; instead, it was intended purely to show the positioning of the red colour covered by the registration.
The CJEU added that “in any event, a sign, such as that at issue in the main proceedings, cannot be regarded as consisting ‘exclusively’ of a shape, where, as in the present instance, the main element of that sign is a specific colour designated by an internationally recognised identification code”.
The CJEU concluded that “Article 3(1)(e)(iii) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that a sign consisting of a colour applied to the sole of a high-heeled shoe, such as that at issue in the main proceedings, does not consist exclusively of a ‘shape’, within the meaning of that provision”.
As the CJEU decided that the answer to the question referred was that the concept of “shape” did not extend to the colours of goods, the grounds for refusal under Article 3(1)(e)(iii) were inapplicable. Accordingly, the case will now return to the Netherlands court.
This is an encouraging result for both trade mark practitioners and brand owners; if this decision had gone the other way, it would have been like stepping on a landmine with a devastating impact as many non-traditional trade marks would potentially have been invalid.