January 27, 2020

January 27, 2020

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EU Court Ruling Keeps Shoe Designers On Their Toes

Last month, on the heels of the ruling from the District Court of The Hague, the Court of Justice of the European Union (CJEU) ruled that Christian Louboutin’s red high-heeled soles are protectable as a trademark.

As previously discussed, Louboutin decided to sue to protect its hue.  Louboutin has owned a registered Benelux trademark for the red sole since 2010, and in 2013, Louboutin sued Van Haren Schoenen BV (Van Haren), alleging that Van Haren’s blue high heels with red soles infringed Louboutin’s trademark.  In rebuttal, Van Haren argued that Louboutin’s trademark is invalid because the red color is part of the “shape” of the shoe, and shapes are not protectable as trademarks under the EU equivalent of the US “functionality doctrine.”  The functionality doctrine does not protect aspects of trade dress that serve a utilitarian purpose.  If a product feature is essential to the use or purpose of the article, or affects the cost or quality of the article, then the product feature is deemed functional and cannot be trademarked.

European trademark law prohibits registration of marks that “consist exclusively of a shape which gives substantial value to the goods.” Article 3(1)(e)(iii) of Directive 2008/95/Ec. In last month’s ruling, the CJEU pointedly interpreted the meaning of “shape” within Article 3(1)(e)(iii) and evaluated whether “shape” is limited to the three dimensional properties of the goods (such as contours and volume), or if the term includes other non-three dimensional properties of goods (such as color).  In reaching their decision, the court weighed various policy considerations, such as preventing monopolization and consumer confusion, while at the same time allowing the public to reap the benefits of free competition.

The court noted that the red sole was not “exclusively of a shape” because the main element of this shoe’s design is a “specific color designated by an internationally recognized identification code.”  The CJEU found the red color, rather than the “shape” of the shoe, gives the heel “substantial value,” and oftentimes, the red marking is the sole reason customers can distinguish Louboutin from other designer shoe brands.

The case will go back to receive a final ruling from the Dutch court, which will be bound by the CJEU ruling.

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About this Author

Audrey Nicolson Intellectual Property Lawyer Squire
Attorney

Audrey Nicolson is an associate in the Intellectual Property & Technology Practice. She focuses on various intellectual property (IP)-related transaction documents, including SaaS agreements, assignment agreements and license agreements. She also focuses on trademark prosecution and brand protection.

Audrey has prior experience in patent prosecution, including claim drafting and responding to office actions. During law school, Audrey received the CALI Excellence for the Future Award for having the highest grade in the course Doing Business...

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