Second AG Opinion on Christian Louboutin Red Sole Trade Mark

February 2018

Advocate General Szpunar Opinion: a trade mark combining colour and shape may be refused or declared invalid on the grounds that the trade mark at issue gives substantial value to the goods.

This was in fact the second Opinion given by the CJEU in relation to Christian Louboutin’s shoes trade mark.  Christian Louboutin and his company registered a trade mark in Benelux for ‘footwear’ in 2010 and for ‘high-heeled shoes’ in 2013.  The trade mark was 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)’.  Louboutin brought trade mark infringement proceedings in the Netherlands against Van Haren, a shoe retailer.  Van Haren counter claimed that the trade mark was invalid.  The issue was then referred by the District Court of the Netherlands to the CJEU.

The referring court considered that the mark at issue was “inextricably linked to shoe soles” and “covered not only the three-dimensional properties of goods (such as their contours, measurements and volume), but also colours.”

In his Opinion today, AG Szpunar maintained his view that the trade mark directive is capable of being applied to a sign combining colour AND shape, and such a mark may be refused or declared invalid on the grounds set out under EU trade mark law (Article 3 of Directive 2008/95).  So, in theory, the Christian Louboutin red sole could be invalid as it would fall into that category accordingly to the AG Opinion, as the sole of the shoe (the shape) is integrally linked to the red colour.

This will no doubt come as a blow to Louboutin as the Opinion essentially states that prohibitions on the registration of shapes which give substantial value to goods, can apply to shape and colour combinations and that the registration of the Christian Louboutin red sole falls into that category.  However, the case is not finished yet, as ultimately there is maybe a 'get out' for Christian Louboutin from the Opinion which may give them victory in this dispute and taken from the CJEU Press Release of the Opinion:

"Lastly, as he stated in his first Opinion, the Advocate General notes that his 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."

The key question would appear be whether the shape and colour combination relates exclusively to the intrinsic value of the shape (and presumably colour also), or in the alternative, if the attractiveness of the trade mark flows from the reputation of the mark or its proprietor.   

Some comments in the Opinion appear to be unhelpful to Christian Louboutin, notably that it seemed to the AG that the number of colours that could in fact be applied to the sole of a shoe in order to identify its origin are inherently restricted, since shades of black, grey and brown are, in practice, systematically devoid of distinctive character by virtue of their frequent use by market operators.  Ominously for Christian Louboutin, the AG indicated that he got the impression that the referring court was minded to find that the colour of the Louboutin sole did in fact give substantial value to the goods in question.

We can only wait and see how this one turns out.  The matter will now go to a full decision of the CJEU, which indeed is not bound to follow the AG Opinion, and ultimately it will be for the referring District Court of the Netherlands to apply the facts to the guidance provided by CJEU.

This update was prepared by HGF Partner Lee Curtis. If you would like further advice on this or any other matter please contact Lee or your usual HGF representative, alternatively visit our Contact page to get in touch with your nearest HGF office.