IP Information & News

Can a colour be a shape?

There has been a recent referral to the Court of Justice of the European Union of a case involving Christian Louboutin and its trade mark registration for its red-soled shoe. This referral stems from an infringement matter brought by Louboutin against Van Haren Shoenen, a Dutch shoe retailer, who sold high heeled shoes with a red sole.

In response to the claim of infringement, Van Haren counterclaimed that the Benelux trade mark no. 0874489, which Louboutin was relying on, was invalid because:

  • it did not meet the strict registering criteria regarding colour marks and shape marks, and therefore it lacked distinctive character
  • the colour red for shoe soles is no longer distinctive in the fashion industry
  • the sign as registered consisted solely of a shape which gives substantial value to the goods, which is contrary to Article 2.1.2 of the Benelux Convention on Intellectual Property (BCIP), in accordance with Article 3(1)(e)(iii) of Directive 2008/95

On the first two points, the Court acknowledged that the market research which was submitted proved that red-soled shoes were highly distinguishable from other brands and were recognised by a significant proportion of consumers as originating from Louboutin.

The third counterclaim is the pivotal point for this case. The court found that the red sole does give substantial value to the goods. However, Article 3(1)(e)(iii) of Directive 2008/95 states that “signs which consist exclusively of the shape which gives substantial value to the goods shall not be registered, or if registered shall be liable to be declared invalid.” This article does not mention colour.

Different language interpretations of Article 3 do not refer to shape. For example, the German, French and Italian translations refer to “Form, Forme and Forma”, respectively, which do not only describe three-dimensional shapes, but can be used to refer to two-dimensional shapes as well. Does this mean therefore that the word ‘shape’ as interpreted in English (and possibly in Dutch) is unfairly restrictive in comparison to its European neighbours?

The Rechtbank den Haag (the Court of The Hague) has referred the following question to the Court of Justice of the European Union:

Is the Concept of ‘form’ in the sense of Article 3(1)(e)(iii) of Directive 2008/95 [sic] restricted to the three dimensional characteristics of the product (outlines, dimensions and volume thereof) or, does the Concept of Form also provide for other (non-three dimensional) properties of the product, such as colour?

Van Haren argued that the red soled trade mark was still caught by Article 3(1)(e)(iii) because it is the shape of the red sole for the shoes which adds substantial value to the product. Louboutin disagreed that the article should apply, on the basis that the exception refers purely to shape and the substantial value is due to the coloured sole alone, which distinguishes the product.

Van Haren argues that if non-three dimensional characteristics, such as colour, are not covered by Article 3(1)(e)(iii), it would allow for trade mark proprietors to monopolise and stop competitors indefinitely from using popular and attractive characteristics of a product, such as a red sole, which seems to go against the purpose of Article 3.

In making its argument, Van Haren referred to the opinion of Advocate General Szpunar in the Hauck v. Stokke case, in which he said “Art 3(1)(e)(iii) is intended to preclude a monopoly on the appearance of goods which have no technical or functional use, but at the same time where attractiveness strongly influences the preference of the consumer”.

If, in answering the question put to it, the CJEU finds that the Louboutin trade mark is not covered by the shape element under Art 2.1.2 BCIP or Article 3(1)(e)(iii), then the trade mark will still be valid. Consequently, based on the findings to date, the opinion of the Rechtbank den Haag will be that Van Haren did infringe Louboutin’s registered trade mark.

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