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What's in a red sole? Can the colour red be protected for a red soled shoe?

View profile for Simon Bennett
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The Advocate General recently ruled that a trade mark that combines the colour red (or more specifically Pantone 18 1663TP) and shape can be refused or declared invalid. (Christian Louboutin, Christian Louboutin SAS v Van Haren Schoenen BV (Case -163/16)).

This spells bad news for Christian Louboutin which has been trying to enforce its famous red sole as a mark (see here, here and here).

 

 

 

The case of Christian Louboutin, began in 2012 when Louboutin filed a trade mark infringement claim against Van Haren, a Dutch company selling high-heeled women’s shoes with red soles. Van Haren counterclaimed that Louboutin’s mark for the colour red as applied to the sole of shoe (as reproduced below) was invalid.

 

 

In June 2017, the Advocate General ruled amongst other things, that the mark had to be considered as both the shape and the colour together rather than a mark claiming colour on its own.

The question considered into today’s ruling was: Is the notion of ‘shape’ 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?”

In his answer, the Advocate General agreed that the colour red gives in fact Louboutin’s goods a substantial value. However, the colour has to be considered with the shape and cannot be taken out of context.   

This ruling is likely to throw doubt as to whether a colour can perform the essential function of a trade mark (i.e. identifying its proprietor) in circumstances where when such colour is used separately from the shape of the sole.

It could result in Louboutin being unable to prevent competitors from applying a red sole to their shoes.

This is not, however the end of the line as the Advocate General’s Opinion is not binding on the Court of Justice’s decision. Judgment will be delivered at a later date and its outcome will have important implications not only for Louboutin’s European battle to protect its famous red sole but also for owners of shape and colour trade marks in the EU.

Watch the space for developments!

 

The contents of this article are intended for general information purposes only and shall not be deemed to be, or constitute legal advice. We cannot accept responsibility for any loss as a result of acts or omissions taken in respect of this article.