News

Cécile de Lagarde discusses Louboutin’s “red sole trade mark”

  • March 26, 2018 test
  • By Hunters Law

Louboutin’s “red sole trade mark” at risk of being invalid

French shoe maker Louboutin’s well-known red sole, which has been registered as an EU trade mark not without difficulty, is now at risk of being found invalid as the Advocate General at the European Court of Justice gave an additional opinion on 6th February 2018 in a case referred to the European Court of Justice by a Dutch court (Louboutin and another v Van Haren Schoenen BV (Case C-163/16)).

Louboutin started trade mark infringement proceedings against a Dutch company known as Van Haren, who launched a collection of high-heeled women’s shoes with red soles in 2012, which appeared very similar to Louboutin’s. As a defence, Van Haren claimed that the red sole trade mark was invalid. Article 3(1) of the 2008 Trade Marks Directive prevents registration as a trade mark of any sign that consists exclusively of a shape that gives substantial value to the goods. The question was whether the concept of “shape” covers not only the three-dimensional properties of goods (such as their contours, measurements and volume) but also colours.

According to the Advocate General, the prohibition set out in the trade mark directive is capable of applying to a sign combining colour and shape, such as Louboutin’s red soles. Moreover, he was doubtful as to whether the colour red can perform the essential function of a trade mark, namely that of identifying the origin of the goods when used separately from the shape of the shoe. The Advocate General was also of the view that the red colour of the sole gave substantial value. He pointed out that the concept of “substantial value” related exclusively to the intrinsic value of the shape; and must take no account of the reputation of the mark or its proprietor.

If this opinion is followed, this could mean that Louboutin will not be able to prevent its competitors, including haute couture houses, from commercialising red soled shoes.

At the opposite end of the market, the footwear brand Crocs has just lost its European design protection for its famous rubber sandals following a decision of the General Court of the European Union, which confirmed a decision of the European Union Intellectual Property Office invalidating the registered design for lack of novelty.

For queries in relation to commercial matters, please contact the partner at Hunters having responsibility for your legal matters, or for new enquiries please contact a member of our Business team.

Cécile de Lagarde is an Associate Solicitor specialising in intellectual property law. 

Related News

May 17, 2019
Gregor Kleinknecht writes for Discover Germany’s June magazine
May 02, 2019
Gregor Kleinknecht appointed by ADR.eu as a UDPR panellist for resolving domain name disputes
Mar 22, 2019
Amanda Lathia examines cross-border mergers between UK companies and those governed by the law of another EEA state in Lawyer Monthly
Mar 18, 2019
Gregor Kleinknecht discusses the new draft Directive on Copyright in the Digital Single Market in Discover Germany
Feb 27, 2019
Gregor Kleinknecht’s chapter on options for brand protection and dispute resolution in Growing Business Innovation
Feb 21, 2019
Stephen Morrall and Jonathan Godwin-Austen speak at The LAPADA Conference 2019
Feb 13, 2019
Gregor Kleinknecht discusses social media platforms and regulation in Discover Germany
Jan 04, 2019
Gregor Kleinknecht’s article on the new EU Geoblocking Regulation in Discover Germany
Dec 11, 2018
Peter Robinson discusses The Electronic Communications Code
Dec 03, 2018
Gregor Kleinknecht discusses journalists and the law in Discover Germany

© Hunters Law LLP 2019 | Privacy NoticeLegal & Regulatory | Cookies Policy | Complaints Procedure

Hunters Law LLP is authorised and regulated by the Solicitors Regulation Authority (number 657218)