The trade mark consists of “the colour red (Pantone 18 1663TP) applied to the sole of a shoe as shown (the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark”)
Following a reference from The Netherlands (District Court of The Hague) considering the validity of Louboutin’s red sole shoe trade mark (as part of an appeal against a preliminary injunction in infringement proceedings brought by Louboutin against a Dutch footwear brand), the Attorney General (AG) has unusually been required to provide a second opinion following the Chamber of the Court of Justice of the European Union’s reference of the matter to the Grand Chamber. Under EU law (Article 3(1)(e)(iii) of the Trade Marks Directive 2008) signs (trade marks) that consist ‘exclusively of the shape that gives substantial value to the goods’ are prohibited from registration. The rationale for this prohibition is (and was) to ensure that certain trade marks remain available to use and do not result in anti-competitive restrictions.
The question referred to the AG was whether the notion of ‘shape’ in this context included non-3D properties such as colour, as well as the 3D properties such as contours, i.e. would a hybrid mark be caught by this prohibition?
The AG, confirming his first opinion, maintained that the trade mark in question cannot be classified as a colour mark, as he doubted that the colour could identify the proprietor when used separately from the shape of the sole of the shoe, and that Article 3(1)(e)(iii) of the Trade Marks Directive 2008 is capable of applying to a sign consisting of a shape (‘or another characteristic’*) of the goods and which seeks protection for a certain colour.
*Note here that ‘shape, or another characteristic’), will be expressly covered by the prohibition when the Trade Marks Directive 2015/2436 is transposed into the national laws of individual EU member states on or before January 2019. The AG considers that the additional language merely clarifies what are already established principles of law under the current directive. Furthermore, ‘position marks’ will also fall for scrutiny under the prohibition.
In considering the issue of ‘substantial value’ the AG discussed whether an element of aestheticism dependent on external factors such as fashion trends and public perception could form part of ‘substantial value’. The AG stressed that a trade mark’s reputation should be left out of the equation. “The fact that the characteristics giving substantial value to the goods are, in part, determined by the public’s perception does not, in my view, mean that account may be taken of the reputation of the trade mark or its proprietor as part of the assessment to determine whether the shape at issue gives ‘substantial value’ to the goods”. That must be determined through an assessment of the “intrinsic value of the shape” alone. The deciding factor with regard to the public’s perception is not the distinction between shape, colour or position, but the identification of the origin of the goods based on the overall impression of the sign.
In a case like Louboutin, the question to ask would be: is the red sole a sign which gives substantial to the shoe, or is it rather the reputation of the trade mark represented by that particular sign that confers such value? We now await the Grand Chamber’s direction – will it agree with the AG’s opinion? – and ultimately the ruling of The Netherlands’ court. A ruling that the mark is invalid, will not only be a loss to Louboutin, but will likely create a greater barrier for the registration of less conventional and hybrid trade marks.