The European Court of Justice has ruled this week that fashion designer Christian Louboutin’s trademark for his red soles should be allowed. The case was against rival firm Van Haren, who claimed that the soles of the shoes should not be able to be registered due to the EU law preventing common shapes being trademarked; they believed the soles should be included on the list of prevented shapes.

The final court judgment noted that the mark does not relate to a ‘specific shape of sole for high-heeled shoes’ and that the description of the mark states that the contour of the shoe does not form part of the mark. The press release from the ECJ confirms that “where the registration of the mark did not seek to protect that shape [the sole of the shoe] but sought solely to protect the application of a color”, thus it cannot be held that the mark consists exclusively of that shape.

The court added: ‘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 color designated by an internationally recognized identification code.’

The decision came as a shock as the ECJ rarely rule against the previous Opinion of the Advocate General. In this case, they ruled against Maciej Szpunar, who had held that the Louboutin trademark was a shape mark and therefore liable to be invalidated.

Shireen Peermohamed, Partner in the IP team at Harbottle and Lewis said:

“Colour can be a key part of a brand’s identity – a feature which tells the consumer whose products or services they are buying. After all, which brand do you think of when you see a beautiful pair of earrings boxed in pale blue? Or milk chocolate wrapped in purple? For the fashion conscious, red soles shoes have long been synonymous with Louboutin: the red underside of a shoe peeping out from under a table will immediately signal Louboutin. The EU Court of Justice has finally agreed.” 

Peermohamed added: “In the face of the challenge that Louboutin’s trademark for its signature red color applied to a shoe sole is invalid because it is actually just the shape of the sole which happens to be colored red and hence excluded from protection under the law – the Court has taken a common sense view. It is a view which will chime with fashionistas and fashion aware consumers alike. The main element of Louboutin’s trademark is clear according to the Court – it is the specific red color and not the shoe sole shape.  Hardly surprising in light of the fact that the trademark description explicitly says that the shape is not part of the mark and it is just there for the positioning of the red color.”

Concluding the comments, Shireen stated that “Brand owners who have registered color elements of their identity as trademarks will no doubt be breathing a sigh of relief at this outcome. Colour trademarks live to fight another day. Consumers who do use color to identify the products and services they are buying will no doubt be wondering how on earth anyone could doubt that color can perform a key role in signaling where products and services originate from.”

 

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