Christian Louboutin has been handed a win from the European Union’s highest court in its latest battle over the red sole. Shortly after the lawsuit that the Paris-based footwear brand initiated against Yves Saint Laurent in a New York federal court came to a close, Louboutin – which is famous for its Chinese red shoe soles – initiated a long(ish)-running dispute with Van Haren, after the Dutch fast fashion brand launched a collection of high-heeled footwear, entitled, “Fifth Avenue by Halle Berry,” in 2012, featuring red soles. Up for debate: Does Louboutin maintain valid trademark rights on its famous red shoe sole?
In April 2013, the District Court of The Hague awarded Louboutin a preliminary injunction, ordering Van Haren to immediately cease its manufacturing and selling of black and blue shoes bearing red-soles, and to pay Louboutin’s court costs and legal fees. Van Haren appealed this decision and the Court of Appeals referred the case to the Court of Justice of the European Union (“CJEU”) – the EU’s highest court – to determine whether Louboutin’s trademark is valid.
That is how the case ended up before CJEU’s Advocate General Szpunar, who held almost exactly a year ago that Louboutin’s red sole mark qualifies as a shape mark, or “a mark consisting of the shape of the goods and seeking protection for a color in relation to that shape.” He further held 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). However, what went unanswered was whether such protection applied to Louboutin.
On Tuesday, Louboutin got its answer, with the CJEU panel going against an earlier opinion from Szpunar, who stated in a non-binding opinion February that he had “doubts as to whether the color red can perform the essential function of a trademark, that of identifying its proprietor, when that color is used out of context, that is to say, separately from the shape of a sole.” Instead, the CJEU held that Louboutin’s red sole is not prohibited from trademark protection, according to European Union trademark law, namely Article 3(1)(e)(iii) of Directive 2008/95.
Faced with determining whether Louboutin’s red sole amounts to a shape mark that “gives substantial value to the goods,” and thus, should not be registered as a trademark, the CJEU panel held that in accordance with “the usual meaning of [the] concept of shape,” which is understood to mean “a set of lines or contours that outline the product concerned,” a color, “without an outline,” does not constitute a “shape.”
The panel went on to state that “as [it] has been observed by the German, French and United Kingdom governments, as well as by the [European] Commission, the trademark at issue does not relate to a specific shape of sole for high-heeled shoes.” Instead, the CJEU panel states, “The description of [the red sole] trademark explicitly states that the contour of the shoe does not form part of the mark and is intended purely to show the positioning of the red color covered by the registration.”
“In any event,” the panel continues, “a sign … cannot be regarded as consisting ‘exclusively’ of a shape, where, as in the present instance, the main element of that sign is a specific color designated by an internationally recognized identification code.” That code is Pantone 18‑1663TP.
In short: The color that appears on the Louboutin shoe sole is just that, a color (that identifies a source), and it can be protected.
Now, with the CJEU’s decision in mind, the case will be remanded back to the District Court of The Hague for the final determination as to whether Louboutin’s trademark registration is valid. Louboutin said it expects the lower court “to confirm the validity of the red sole trademark.”
ion“The protection of Christian Louboutin’s red sole trademark is strengthened by the European Court of Justice,” a representative for Louboutin said in a statement. “The red colour applied on the sole of a woman’s high heel shoe is a position mark, as Maison Christian Louboutin has maintained for many years.”