from heel to toe: the “red sole” moves to the cjeu
TRANSCRIPT
April 2016
NEWSLETTER
FROM HEEL TO TOE: THE “RED SOLE” MOVES TO THE CJEU The litigation of the luxury retailer Christian Louboutin’s red sole has been subject to several years of legal disputes. Recently, several lawsuits took place in the Benelux, cultivating into an interesting question referred to the Court of Justice of the European Union (CJEU), the highest court in the EU system (C-163/16 - Louboutin and Christian Louboutin). Just like mastering the art of walking in high heels, the red sole outcome takes practice and patience. The facts are well-known. Christian Louboutin, the French designer of high fashion shoes for women, is the owner of a trademark (Benelux registration number: 0874489) for certain goods in Class 25, which after a restriction now reads: “High-heeled shoes (except orthopaedic footwear).” The mark is described as follows:
“The trademark consists of the color red (Pantone No 18.1663TP) applied to the sole of a shoe as shown (the outline of the shoe is therefore not part of the trademark but serves to show the positioning of the trademark)”.
Representation of the figurative mark Representation without the outline of the shoe
In April 2013, the District Court of The Hague (in the Netherlands) awarded Louboutin a preliminary injunction against Dutch company Van Haren for selling a type of high heel shoe with a red outsole as part of the its “5th Avenue by Halle Berry” collection. Louboutin claimed that its red sole trademark was not a shape or a color trademark but, rather, a figurative trademark. The Court ordered Van Haren to cease its manufacturing and selling of shoes bearing red-soles and to pay the legal costs of 68.973,77 EUR to Louboutin. The Judge also observed that the red sole trademark had aspects of both a shape and a color mark. Indeed, the registration of the trademark consisted of a specific color and instructions regarding the placement of the mark (see above). In its decision of April 1, 2015 (C/09/450182), the District Court considered it necessary to refer a question to the CJEU about the applicability of Article 3(1)(e)(iii) of the (old) Trademark Directive (2008/95/EC). The question thus arises as to whether the notion of “shape” within Article 3(1)(e)(iii) of the Trademark Directive is limited to 3D elements of a product (such as contours, dimensions and volume) or also includes other 2D characteristics of the goods (such as color). In other words, if color is not covered by this absolute ground for refusal, this provision could effectively and indefinitely prevent competitors from marketing a product with such characteristics on their products.
April 2016
The Benelux saga may soon come to and end. On March 9, 2016, a question was officially referred to the CJEU as follows:
“Is the concept “vorm” within the meaning of article 3(1)(e)(iii) of Directive 2008/95/EG (translated as “Form”, “shape” and “forme” in the German, English and French version of the Trademark Directive, respectively) limited to three-dimensional features of the goods, such as its outlines, dimensions and volume (which are all capable of being represented three-dimensionally), or does this provision apply also to other (non-three-dimensional) features of the goods, such as color” (free translation).
Interestingly, the new trademark Directive 2015/2436, in article 4(e)(iii), as possible absolute ground
of refusal, contains the following provision: “The following signs shall not be registered or, if registered, shall be liable to be declared invalid: (…) signs which consist exclusively of: (iii) the shape, or another characteristic, which gives substantial value to the goods”. This new provision specifically excludes the registrability of signs which exclusively consist of not only the shape but also of other "characteristics" as “European Union trade mark”. A color could be considered as such a “characteristic”, which would therefore imply that colors cannot be registered as a trademark in the EU. It is highly likely that the CJEU will come to the same conclusion in regards to article 3(1)(e)(iii) of the old Directive. (For more info on the new trademark reform, please see our previous article). The question referred to the CJEU also seems to highlight some differences between the various versions of the Directive (Dutch, German, English and French versions) in terms of 3D features and non-three-dimensional features. It appears as if certain versions are more restrictive than others and are limited to three-dimensional elements. However, it would be odd to suggest that, for instance, the English version refers only to three-dimensional marks but others do not. The concept should surely be defined harmoniously across the EU. We can only wait and see how the CJEU will interpret the (old) trademark Directive. As Marilyn Monroe said: “Give a girl the right shoes, and she can conquer the world”. Whether the right shoes include a red sole shape, that is another story… For further information or if you have any questions, please do not hesitate to contact any of the KOAN LORENZ professionals listed below:
Thomas DUBUISSON Associate
Agnès MAQUA Partner
Dietger GLORIEUX Associate