A Dutch company, Van Haren, sold high heeled shoes with red soles. Louboutin, famous for selling high heel shoes only with red soles, sued Van Haren in the Netherlands for Benelux trademark infringement, which is registered for ‘high heeled shoes, consisting of the colour red, applied to the sole of the shoe'. Van Haren contests the validity of Louboutin’s mark, arguing that the colour is part of the shape of the shoes, giving them substantial value.

Trademark Regulation 2015/2424 (EUTMR) stipulates that signs for which trademark protection is sought will be declared invalid if they consist “exclusively of shape of the goods or another characteristic of the goods, which gives substantial value to the goods.” The aim of this provision is to prevent granting monopolies over external features, which as a result of that value are essential to market success. It must be noted that this exclusion only applies where the market advantage “results from the intrinsic value of the shape rather than reputation of the mark.”

The District Court of The Hague hearing the case recognized that the red colour is an aspect of Louboutin shoes that is inseparable from them but halts to describe it as the shape of the shoes within the meaning of Trademark Regulation 2015/2424 (EUTMR). It thus referred to the CJEU to consider as to whether or not this provision “is limited to 3D properties of the goods...to the exclusion of colours.”

So far, we can only rely on AG Szpunar’s opinion on the legal issues as the CJEU is awaited to hear the case. He firstly regards as to whether or not the contested mark is a per se colour mark or a mark consisting of the shape of the goods, where protection may be extended to the colour in relation to that shape. Although this is ultimately for the referring court to examine, the AG notes that a colour per se can be protected, if it satisfies the necessary criteria under Article 4(a) and (b) EUTMR. For example, the colour ‘lilac’ of Milka was afforded protection.

Nevertheless, AG Szpunar opines that Louboutin does not seek to protect the red colour in abstract, i.e. as a colour mark, but on the sole of high heeled shoes, which is in relation to a product and its shape. Since this is a combination of a colour and a shape, the AG argues that the red colour must be interpreted as ‘a characteristic reflected in the shape of the high heel shoes’ and thus caught by Trademark Regulation 2015/2424 (EUTMR), under which marks will be declared invalid if they consist of “shape of the goods and other characteristics of the goods.” The AG further suggests that the red colour must be interpreted as “other characteristic adding substantial value to the goods” under Trademark Regulation 2015/2424 (EUTMR), since the aesthetic characteristics of the shape affect the attractiveness of the goods and thus add the substantial value. He answers the referred question in that the provision is not limited to 3D properties of the goods and catches colours as well.

Considering the purpose of Trademark Regulation 2015/2424 (EUTMR), if the CJEU finds that this provision is limited to 3D properties, as to the exclusion of colours, and thus allows Louboutin’s mark to be protected, it could risk removing the freedom of competitors to offer high heel shoes incorporating the same characteristic. To permit an exclusive use of the red colour in relation to a particular shape, i.e. the soles of high heel shoes, could lead to granting Louboutin an unfair advantage, which impedes market competition and countervails the objectives of Article 4(1)(e).

At the same time, these arguments may be unfounded, since the purpose of this provision is to avoid shapes being monopolized and Louboutin is not seeking exclusivity in respect of a shape. Moreover, the essential function of trademark is indicating origin in order to prevent confusion of consumers. As Louboutin said himself, “the red colour of the soles... identify to the public that they are mine”. Consequently, finding that the provision encompasses 2D properties, such as colours, would mean the trademark would not be protected and hence other shoe retailers would be allowed to use red soles on their high heel shoes, leading to confusion of consumers, and thus impeding the fundamental function of trademarks.

Louboutin has been successful in court in New York against Yves Saint Laurent in 2012, which held that Louboutin can only prevent brands from creating shoes, whose colour is different from their red sole, as that is likely to confuse consumers. That seems to be a reasonable decision in terms of objectives of trademark law. It remains to be seen whether the CJEU will comply with AG’s opinion and consider that the alleged market concerns prevail over trademark’s fundamental functions.

Written by Vanessa Biermannova