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IP Information & News

07 July 2017

Can a Colour be a Shape?


The Advocate General thinks so, (if the colour is functional)…an update on the Christian Louboutin trade mark application.

In March 2016 we reported here 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 HalleBerryShoe

In response, Van Haren counterclaimed that the Benelux registration relied upon by Louboutin Louboutin was invalid.

The Court of the Hague found that the red sole on Louboutin shoes did 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/form/forme/forma which gives substantial value to the goods” (emphasis added) shall not be registered, or if registered shall be liable to be declared invalid. This article does not mention colour.

As discussed in the initial post, 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 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 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 is 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 were to be classified as “a mark consisting of a colour per se”, then 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 then 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.