Louboutin and its Red Soles Get Yet Another Day in Court

Five years after a federal court in New York decided the Christian Louboutin and Yves Saint Laurent case, which centered on Louboutin’s rights in its red sole, Paris-based footwear brand is back in court in the Netherlands in connection a dispute against Dutch footwear brand Van Haren.

Louboutin filed suit against the rival footwear maker in 2013 in the Netherlands, seeking an order from the court to force Van Haren to stop selling its own red soled shoes under its own brand name. In April 2013, the District Court of The Hague ordered Van Haren to cease manufacturing and selling black and blue shoes bearing red-soles, and to pay Louboutin's court costs and legal fees.

Van Haren appealed this decision, and in March 2014, the Courts of Appeals referred the case to the Court of Justice of the European Union (“CJEU”) to determine whether Louboutin's trademark is valid. This past June, the CJEU Advocate General, Maciej Szpunar, issued an opinion stating that Louboutin's red sole mark qualifies as a shape mark, “a mark consisting of the shape of the goods and seeking protection for a color in relation to that shape.” She further stated that the European Trademark Directive could, in fact, apply to and protect a shape in combination with a color (in this case, high heels and bright red).

While it appeared as though, the parties’ battle may end there, the CJEU has – “unexpectedly,” according to the MARQUES Class 46 blog on European trade marks –decided to reopen the case, assigning the case to the court's Grand Chamber with a hearing scheduled for November 14, 2017, in which the court will consider whether protection under the European Trademark Directive extends to “non three-dimensional properties of the goods, such as their color.”

* The case is Christian Louboutin, Christian Louboutin SAS v Van Haren Schoenen BV, C-163/16.