When designing his first pair of stiletto heels using his assistant’s red nail polish in 1993, Christian Louboutin could never have anticipated that his design would become the subject of a lengthy legal battle over whether it could be protected as a trade mark.

However, in a very welcome and much anticipated decision for the fashion industry, the CJEU has finally clarified that the red sole of a Louboutin shoe can be protected as a trade mark.

The case began as an infringement claim in the Netherlands brought by Louboutin against Van Haren, a shoe retailer using a red sole on its shoes.  Van Haren counterclaimed that Louboutin’s trade mark was invalid due to its inextricable connection to the three-dimensional shape of the underside of a high-heeled shoe (as pictured above) and was therefore not a trade mark because it was merely a “shape”.  The CJEU therefore had to consider the meaning of the term “shape”, and whether this could indeed include a colour.

Common sense prevailing, the CJEU has ruled that the meaning of the word “shape” in everyday language shall be the determining consideration for the courts when interpreting its application to a particular mark.  It follows, therefore, that a colour is not a shape and should not be treated as such for the purposes of trade mark protection.  The case will now go back to the court in the Netherlands for a final ruling, which we expect will hold the trade mark valid.

Although Louboutin has been successful now it has not always succeeded: in the past suffering setbacks at the hands of Yves Saint Laurent as reported by Fashionlaw.co.uk here and also by Zara in 2012, where the French Supreme Court cancelled their trade mark due to lack of distinctiveness.  Had Louboutin not been the holder of robust rights across Europe, and indeed the world, this outcome would not have been possible.

What does this mean for fashion brands?

This outcome is great news for the fashion industry, and the right to obtain protection for distinctive colours and iconic designs in fashion items.  What are the takeaways?

  • It is crucial to register your rights if you want the best protection whether this is as a trade mark as in Louboutin or whether as a design.
  • Trade marks can be filed at any time and it is possible, although not easy, to protect colours or shapes as trade marks.
  • Shapes and colours can easily be protected as registered designs provided they are registered within a year of first marketing.   This gives the designer a grace period to determine whether the design is likely to be a commercial success.  The costs of protection are not high and registration normally only takes a few days.

If you need further help on any of these issues please contact one of the members of the Fox Williams fashion team.


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