In 2010 Christian Louboutin, the French designer famous throughout the world for his shoes characterized by a scarlet red sole, registered a Benelux trademark which consisted “of the colour red (Pantone 18 1663TP) applied to the sole of a shoe as shown”.
In 2012 Louboutin applied to the District Court, The Hague seeking a ruling that Van Haren was infringing the Louboutin mark. Van Haren argued that the Louboutin mark was invalid on the grounds that the colour red, applied to the sole of the shoe, corresponds to the shape of the product itself and gave the product substantial value.
The District Court, The Hague referred the question to the CJEU, requesting clarification as towhether the bar on registering as marks shapes that give substantial value to a product (Article 3(1)(e) of Directive 2008/95/EC) also applied to (non three-dimensional) properties of the product, such as colours.
On 12 June 2018 the CJEU ruled that although the colour red of the Louboutin mark was delimited by the shape of a shoe, it was protectable because the color could not be classified as a shape mark which gives “substantial value” to the product. The decision of the Court deviates from two previous Opinions issued by Advocate General (AG) Szpunar, respectively on 22 June 2017 and 6 February 2018 (commented on in our IP Focus of 27 February 2018). The AG classified the sign asa shape mark claiming protection for a particular colour in relation to that shape– rather than a mark consisting of a specific colour – which gave substantial value to the productand as such not validly protectable since it is subject to the bar imposed by Article 3(1)(e) of Directive 2008/95/EC.
However, in its decision of 12 June last, the Court of Justice ruled that a colour per se cannot come within the concept of “shape” as set out by the case law of the Court and interpreted in light of the usual meaning of the term “shape” in everyday language, i.e. a set of lines or contours which spatially delimit a product. Although the shape of the shoe undoubtedly plays a fundamental role in determining the part of the product to which the colour is applied, it cannot be held that the Louboutin mark consists “exclusively” of the shape of the product since the description of the sign expressly claims that the shape of the shoe is not part of the mark but is merely intended to show the positioning of the colour red - the only subject of protection.