On high-heels and in red, by Christian Louboutin
Autor: Cloe Adelantado
In its recent judgment of June 12, 2018 of the Case C-163/16, the Court of Justice of the European Union (ECJ) confirmed that the colour red on the soles of Christian Loboutin’s high-heeled shoes is a trademark, the sign does not fall under the prohibition of registration for aesthetic functionality provided for in Article 3(1)(e)(iii) of the Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (now Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks).
The trademark was applied for by Christian Loboutin on December 28, 2009 and registered on January 6, 2010, trademark number 874489 for goods in Class 25 of the Nice Agreement (“Footwear (other than orthopaedic footwear)”).
The trademark consists of the colour red Pantone 18-1663TP applied to the sole of a shoe (limited to high-heeled shoes), not being the trademark the shape of the shoe. The shape in the drawing is only intended to highlight the position of the trademark.
The lawsuit that has given rise to this ECJ judgment was initiated in the Netherlands by Christian Loboutin before the “Rechtbank Den Haag” (District Court, The Hauge) against Van Haren, a shoe retailer in the Netherlands who, given the success of the famous Loboutins, decided in 2012 to sell women’s high-heeled shoes with red soles. The Court on July 13, 2013 handed down a judgment upholding partially the claims of Christian Louboutin. The defendant challenged the mentioned judgment alleging that the trademark was a two-dimensional figurative mark consisting of a red colour surface and therefore invalid on the basis of Article 3(1)(e)(iii) of the mentioned Directive.
Article 3(1)(e)(iii) of the Directive 2008/95/EC prohibits the registration of a sign consisting exclusively of the shape of a product which gives substantial value to it.
The “Rechtbank Den Haag”concluded that: (i) in view of the graphic representation and description of the trademark, the colour red was inextricably linked to a shoe sole and could not be regarded as a mere two-dimensional figurative mark, and (ii) in 2012 the relevant public of women’s high-heeled shoes was able to identify the origin of the trademark as Christian Loboutin’s shoes. However, the District Court had doubts about the interpretation of the concept of “shape” within the meaning of the mentioned of article 3(1)(e)(iii) of the Directive 2008/95/EC and decided to stay the proceedings and refer the following question to the ECJ:
“Is the notion of “shape”, within the meaning of Article 3(1)(e)(iii) of [Directive 2008/95] (respectively referred to in the German-, [Dutch-] and French-language versions of [that directive] as “Form”, “vorm” and “forme”), limited to the three-dimensional properties of the goods, such as their contours, measurements and volume (expressed three-dimensionally), or does it include other (non-three-dimensional) properties of the goods, such as their colour?’”
The ECJ, contrary to what the Advocate General suggested in his conclusions, considers that the meaning and scope of the concept of “shape” must be determined in its usual meaning in everyday language, taking into account the context in which it occurs and the purposes of the legislation of which it is part. According to the ECJ: “the concept of ‘shape’ is usually understood as a set of lines or contours that outline the product concerned”. It concludes that: “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 other words, it is not a shape what the Christian Loboutin’s intends to protect, but a certain position of the colour in the product.
Consequently, according to the ECJ, a trademark may fulfil the function of identifying the sign and may therefore be registered as such if its main object is a specific colour applied to a specific part of the product.
Christian Loboutin will thus be able to keep his exclusive rights to the colour red Pantone 18-1663TP on the soles of his high heels in the European Union as long as the registration is in force and in use.