The Court of Justice of the European Union’s recent ruling which deemed Christian Louboutin’s red high-heeled soles as protectable as a trade mark has caused considerable controversy.
Christian Louboutin initiated legal proceedings in the Netherlands in 2013 in an attempt to prevent Dutch designer, Van Haren, from selling similarly designed red-sole shoes. The French designer alleged that Van Haren’s blue high heels with distinctive red soles infringed upon Louboutin’s well-known Benelux trade mark (No. 0874489). This trade mark represents a high-heeled shoe with a red sole and is described as follows: “the mark consists 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).”
In the course of the proceedings, Van Haren claimed that Louboutin’s trade mark was invalid on the basis that the red coloured sole was a figurative trade mark which consisted solely of a shape, and shapes are not subject to trade mark protection under European legislation. Under European trade mark legislation, registration of a mark may be refused, or declared invalid, if the mark consists exclusively of a shape that gives substantial value to the goods. The prohibition aims to prevent applicants from registering publicly utilised designs as such registration can stifle competition by granting monopoly protection over a useful design feature that competitors may require in designing their own goods.
Referral to the ECJ
The Hague District Court recently referred the matter to the European Court of Justice (“ECJ”) for assistance interpreting aspects of EU trade mark law; namely whether the concept of “shape” under applicable legislation was limited to three-dimensional properties or whether it could extend to properties including colour. In determining this question of law, the ECJ noted that the meaning of “shape” must be determined by adopting its usual, everyday meaning.
The ECJ ruled that the Louboutin trade mark does not relate to a specific shape of sole for high-heeled shoes since the description of that mark explicitly states that the contour of the sole does not form part of the mark. Instead, the Court held that the trade mark did not protect the shape but rather the application of colour to a specific part of the product. The Court reasoned that the main element of the trade mark in question was the colour red and therefore, it would be incorrect to determine that the mark consisted “exclusively” of a shape. Accordingly, Louboutin’s trade mark was deemed valid and protectable.
The case will now re-commence in The Hague District Court which is expected to uphold the validity of Louboutin’s trade mark.
What does this decision mean?
Although this controversial decision is not binding upon Australian courts, it is nevertheless interesting in showcasing international acceptance that designers can protect properties such as colours in their trade marks, thereby obtaining a monopoly in that colour.
Take home points
If used correctly, colour can be an effective tool in distinguishing your products from competitors.
If you wish to discuss how best to use colour in the branding of your products, please do not hesitate to contact us to arrange an appointment so that we can discuss a strategy to adopt to ensure that you secure a monopoly in the colour.