The Advocate General thinks so, if the colour is functional. Here’s an update on the Christian Louboutin trade mark application.
Essentially, 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?”
The Advocate General (AG) Szpunar recently gave his opinion. He stated that it was necessary to consider “whether the mark at issue seeks protection for a certain colour per se, not spatially delimited, or whether, on the contrary, such protection is sought in conjunction with other characteristics relating to the shape of the goods.” Clearly, the coloured sole is a fundamental aspect of the registration, and although Louboutin did not claim protection for the contours of the goods, it’s clear from the trade mark registration that protection was actually sought for aspects other than the just the coloured sole.
The AG continued, “what must be determined is whether the sign derives its distinctive character from the colour in respect of which protection is sought per se, or from the exact positioning of that colour in relation to other elements of the shape of the goods”.
The AG concluded that, if the Louboutin mark was to be classified as “a mark consisting of a colour per se”, it would not fall within the scope of Article 3(1)(e). However, if the mark was considered to be consisting of a sign in which the colour is integrated into the shape of the goods, it would fall within Article 3(1)(e).
The AG then considered whether the sign also incorporated a significant non-functional element. “The question of whether or not, in a shape and colour mark, colour is a functional element, must be considered as part of the overall assessment of the sign, from the point of view of Article 3(1)(e)[sic]. It is apparent from that case-law that, conversely, the provision in question applies to a shape of goods which incorporates another element where that element is functional.”
In conclusion, the AG stated “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”.
As an aside, after January 2019, the question posed to the CJEU may be irrelevant. The Trade Marks Directive is being clarified and Article 4(1)(e)(iii) of the new directive will prevent registration of a trade mark of any sign that consists exclusively of “the shape, or another characteristic, which gives substantial value to the goods”. This new wording may well catch the Louboutin registration.