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new development - Louboutin’s red sole trade mark

9 February 2018
Advocate General Szpunar’s recent second opinion is the latest development in relation to Louboutin’s ongoing fight to keep its trade marks for its renowned red sole.

This focused on the correct interpretation of Article 3(1)(e)(iii) of the 2008 Trade Mark Directive under which signs consisting exclusively of a shape which gives substantial value to the goods may be refused or declared invalid in the EU member states. The CJEU has been asked to determine whether, when Louboutin applied for its Benelux trade mark for red applied to a shoe sole, this provision was limited to the three-dimensional properties of the goods, or if it could also include other properties, such as colour.

The AG’s opinion largely echoes his previous comments in the opinion he gave in June 2017, prior to this reference unusually being reassigned for a further hearing before the CJEU. The AG confirmed his view that the concept of “shape” under Article 3(1)(e)(iii) does stretch to marks where colour is integrated into the shape, such as the Louboutin trade mark (this provision has recently been expressly extended to cover “shape and other characteristics” of goods). However, significantly, the AG also reiterated the importance of determining substantial value only by reference to the “intrinsic” value of the characteristic of the goods being considered. In other words, any reputation of the mark or its proprietor, which had become associated with this characteristic, should not to be taken into account.

In his most recent opinion the AG noted briefly that the Dutch court had, prior to its reference, found that the colour red on the soles did add substantial value to the shoes. However, this was before the AG had stressed the importance of discounting the exclusive and glamorous reputation of the Louboutin brand, which is signalled when people see that flash of red.

It is not certain the CJEU will follow its AG. If it does, then it will still be for the Dutch court to confirm whether applying the colour red to the soles would, in itself, add ‘substantial’ value to the shoes, if it did not also tell others these were among the most admired and prestigious of footwear.

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