Louboutin has been dealt a blow in its battle to protect its red sole trademark, after an advocate general ruled that a trade mark combining colour and shape may be refused or declared invalid.
Designer Christian Louboutin and his company had registered trade marks in Belgium, the Netherlands and Luxembourg, covering ‘footwear’ in 2010 and ‘high-heeled shoes’ in 2013 where the colour red is applied to the sole of a shoe.
The case began in 2012, when Christian Louboutin began proceedings against Dutch shoe retailer Van Haren after it included high-heeled shoes with red soles in its Fifth Avenue by Halle Berry footwear line.
The District Court in The Hague consequently granted a temporary injunction against Van Haren, which appealed against the decision. In 2014 the case was referred to the European Court of Justice (ECJ).
Van Haren argued the trademark is “invalid” because EU law does not allow trademarks that consist solely of “the shape that gives substantial value to the goods”.
The court has been considering whether “shape” includes colour. Shape marks are difficult to protect legally; if Louboutin’s red soles are deemed to be a shape mark, there is a risk they will no longer be limited to his footwear designs.
The ECJ’s advocate general Maciej Szpunar has since decided that shape does include colour, which would render the trademark invalid.
He expressed “doubts as to whether the colour red can perform the essential function of a trademark, that of identifying its proprietor, when that colour is used out of context, that is to say, separately from the shape of a sole.”
He added that a decision on the trademark’s validity should not factor in the “attractiveness of the goods flowing from the reputation of the mark or its proprietor”.
The case will now go before the Grand Chamber of the Court of Justice of the European Union (CJEU).
Elaine O’Hare, a senior associate at law firm Stevens & Bolton, said: “This will come as a blow to Louboutin, who has famously clashed with various luxury brands in the past, including fellow French couturier Yves Saint Laurent and badly needs a win in this case, given the failed attempt to protect the red sole trade mark in Switzerland last year.
“If the ruling of the CJEU reflects the advocate general’s recommendation, Louboutin may well lose its red sole trade mark once the case goes back before the Dutch national court. The brand will be seriously restricted in being able to protect the red sole as a ‘badge of origin’, and there is a danger that the once-exclusive red soles will no longer be limited to Christian Louboutin shoes.
“This case will be of great interest to other luxury fashion brands who may themselves be seeking to protect their signature shapes or colours. It is worth noting that, even with such a global following, the court will not take into account the massive reputation that Louboutin’s red soles enjoy. The decision instead hinges on whether this kind of mark is a design feature that risks monopolisation of the market; whether it is an essential characteristic of shoes generally, which should therefore be kept available in the public domain.”
Tania Clark, partner and trade mark attorney at intellectual property firm Withers & Rogers, noted that the CJEU is “likely to follow the [advocate general’s] decision”.
She said: “It now seems likely that the trade mark secured by Louboutin in 2010 will be invalidated. If this happens, other shoe makers, including Van Haren, may be free to make and sell shoes with red soles without any risk of being sued for trade mark infringement.
“It is significant that in the US and some other counties in Europe, Louboutin has successfully secured trade mark protection for its red-sole shoe design. This has been achieved on the grounds that the shoe designer has turned an otherwise purely functional element of a product into a feature that is synonymous with its brand.”