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ECJ gets to the heart and sole of the matter….

ECJ gets to the heart and sole of the matter….

14/06/18

The Court of Justice of European Union issued its judgement in Louboutin C-163/16 on 12 June 2018, holding that Louboutin’s red sole mark registration is valid.

Louboutin had sought to claim exclusive rights to the red sole present on its range of shoes and was the proprietor of a Benelux trade mark registration protecting a mark which consists of the colour red applied to the sole of a shoe. The registration includes a description which states that the contour of the shoe does not form part of the trade mark. The trade mark is shown above.

One of Louboutin’s competitors applied to cancel the Benelux registration on the grounds that it is a sign which consists of shape which gives substantial value to the goods claimed in the registration. Marks which consist of shapes which give substantial value to the goods concerned are not capable of protection via trade mark registration, which means that registrations can be attacked on the grounds that they should not have been accepted for registration.

The question that the CJEU had to deal with was whether the mark in question constituted a “shape”, which would mean that the registration was potentially invalid.

The CJEU has held that “a trade mark consisting of a colour applied to the sole of a shoe is not covered by the prohibition of the registration of shapes”. A trade mark of this nature “does not consist exclusively of the shape”.

The press release issued by the CJEU states that:

In today's judgment, the Court takes the view that, since the trade mark directive provides no definition of the concept of ‘shape’, the meaning of that concept must be determined by considering its usual meaning in everyday language. The Court points out that it does not follow from the usual meaning of that concept that a colour per se, without an outline, may constitute a ‘shape’.

Furthermore, while it is true that the shape of the product or of a part of the product plays a role in creating an outline for the colour, it cannot, however, be held that a sign consists of that shape in the case where the registration of the mark did not seek to protect that shape but sought solely to protect the application of a colour to a specific part of that product.

In the present instance, the mark does not relate to a specific shape of sole for high-heeled shoes since the description of that mark explicitly states that the contour of the shoe does not form part of the mark and is intended purely to show the positioning of the red colour covered by the registration.

The Court also holds that a sign, such as that at issue, cannot, in any event, be regarded as consisting ‘exclusively’ of a shape, where the main element of that sign is a specific colour designated by an internationally recognised identification code.

The decision will place Louboutin in a strong position to continue its aim to assert exclusive rights to the application of the colour red to the sole of a shoe.

The full text of the judgement is not yet available but if you would like to discuss it in more detail, or if you have any general questions about protecting your trade marks, please contact a member of our Trade Mark Team.