In March 2016, we reported that The Court of The Hague referred the Christian Louboutin ‘red sole’ case to the Court of Justice of the European Union.
To quickly recap, Louboutin had filed infringement proceedings against Benelux shoe retailer Van Haren Shoenen, who sold shoes with a red sole.
In response, Van Haren counterclaimed that the Benelux registration relied upon by Louboutin was invalid.
In February 2017, The Court of the Hague asked the Court of Justice of the European Union the following question:
“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?”
In July 2017, we reported the Advocate General’s opinion, which concluded that:
“If the referring court were to conclude that the mark at issue should be regarded as a sign of that type, combining colour and shape, the mark would potentially be caught by the prohibition contained in Article 3(1)(e)(iii) of Directive 2008/95”.
In October 2017 the Court decided to reopen the oral procedure and requested the parties to attend a new hearing.
Classification of the mark at issue
This time, the AG clarified the type of mark that the Application represented, concluding that “the mark at issue should be equated with a sign consisting of the shape of the goods and seeking protection for a colour in relation to that shape, rather than as a trade mark consisting of a colour per se”. This should therefore help to take the mark away from the prohibition of Article 3(1)(e)(iii) of Directive 2008/95.
Change in the language of the absolute ground and 'substantial value'
However, as we’ve previously mentioned, the new Directive (which is to be adhered to by January 2019) changes the language of the absolute ground. The AG clarified the change in the language to be merely a formality, and that the current directive can be interpreted as applying to signs consisting of a shape or another characteristic of the goods and which seeks protection for a certain colour.
In addition, he advised that “the concept of a shape which ‘gives substantial value’ to the goods… 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”. This is good news, considering that IP protection exists to protect a brand’s valuable assets or USP.
Distinctiveness of signs indissociable from the appearance of the goods
The AG went on to state that, “when assessing the distinctive character of a sign, account should also be taken of the case-law on three-dimensional signs”, in accordance with which such signs are distinctive solely where they depart significantly from the norm or customs of the sector, since average consumers are not in the habit of making assumptions about the commercial origin of goods on the basis of signs which are indissociable from the appearance of those same goods. It follows that a sign seeking protection for a colour, which is indistinguishable from the appearance of the goods in question, is distinctive solely where that sign departs significantly from the norm or customs of the sector at issue.
If a sign has acquired a distinctive character following a normal process of educating the relevant public, then article Article 3(1)(b) of the 2008 directive, read in conjunction with Article 3(3) thereof, would not apply.
The case will now be heard by the CJEU but it is important to remember that it is not bound by the AG’s opinion. Overall, is it for them to decide whether the red colour sole gives substantial value to the goods and whether the mark is therefore invalid?