Louboutin red sole trademark: it is not just a colour matter, but rather a shape one

On 22 June 2017, the Advocate General of ECJ, Mr. Szpunar, issued his Opinion in case C-163/16.

Namely the main proceeding and the question referred to ECJ refers to the Benelux trade mark registered by the famous designer Christian Louboutin for “high-heeled shoes (other than orthopaedic shoes) and 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)“, i.e. the following:

AAEAAQAAAAAAAAl9AAAAJDU3MGM4Yzg5LTQxYTEtNGVlZC1hNzA0LTAzZTliYzBlNjljZQ

The alleged counterfeiter, the Dutch shoe retailer Van Haren, contests that the Louboutin trademark is valid, since it is not  a simple two-dimensional mark, but rather it is inextricably linked to the sole of a shoe. The colour is part of the shape of the shoe and as such it would not overcome the absolute grounds of refusal applicable to the registration of signs consisting of shape, provided for by art. 3(i)(e) of EC Directive 2008/95.

The District Court of The Hague referred to ECJ the following question: “Is the notion of ‘shape’ within the meaning of Article 3(1)(e)(iii) of Directive 2008/95 … limited to the three-dimensional properties of the goods, such as their contours, measurements and volume (expressed three-dimensionally), or does it include other (non three-dimensional) properties of the goods, such as their colour?”.

According to the Opinion at hand, the answer is “YES” …. let’s follow the fil rouge pitted by the Advocate General.

Preliminarily, Mr. Szpunar observes that the classification of a trademark as a position mark or as a figurative mark “does not, of itself, prevent that same mark from consisting of the shape of the goods, given that the latter category also embraces signs representing a part or an element of the goods in question”.

Bearing in mind this general principle and confirming the application of general rules for the “overall assessment” of the features of a trademark and the graphic representations and descriptions filed at the time of the application, the Advocate General points out that, on the one hand, the contested Louboutin trademark seeks protection for a certain colour (i.e. red – Pantone 18 1663TP), however, on the other hand, he points out that such a protection “is not sought in the abstract, but for use on the sole of a high-heeled shoe, as represented. The mark does not relate to the shape of a shoe per se, but certain aspects of that shape, namely those which enable us to recognise it as high-heeled women’s shoe, appear to be part of the mark. It is apparent from the representation of the mark that the colour is applied to the entirety of the sole, whatever its precise contours may be. The contours of the sole appear in any event to be a negligible element of the mark, which derives its distinctive character from the unusual positioning of the coloured element and, potentially, the colour contrast between different parts of the shoe”.

In other words, the usage of a specific colour as applied to an element of the surface of the goods, can be considered as a “characteristic reflected in the shape of the goods” and therefore it would fall within the scope of art. 3 (1) (e)  of the Directive 2008/95, and in particular it should be subject to the functional analysis provided therein.

With respect to the latter argument and the potential monopolisation of a colour/shape by a trademark owner, the Advocate General stresses that “the grounds for refusal contained in Article 3(1)(e) of Directive 2008/95 do not prevent the registration of a sign which, although consisting of a shape of goods, also incorporates a significant non-functional element and that “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”.