The Fashion Law Exclusive – Christian Louboutin’s red sole trademark is at issue again.  After a heated battle in New York federal courts a few years ago, in which the Paris-based footwear brand filed a trademark infringement lawsuit against Yves Saint Laurent for selling heels with red soles, Louboutin is back in court – this time in the Court of Justice of the European Union (CJEU), the highest court in the EU legal system.

You may recall that under U.S. law, Louboutin does, in fact, hold a valid trademark registration that extends to its famed red sole.  However, following the YSL case, its registration is not as broad as it would like. The case came to a close in 2012, and Louboutin was forced to amend its trademark registration; as a result, it has rights in the red sole but only when the color of the sole is in contrast with the color of the shoe’s upper. (So, Louboutin cannot successfully claim trademark infringement if another brand makes an all-over red shoe with  red sole).

The latest action comes on the heels of lawsuit that Louboutin filed in 2013 in the Netherlands against Van Haren, seeking an order from the court to force the Dutch footwear brand to stop selling its red soled shoe style, “5th Avenue by Halle Berry.” In April 2013, the District Court of The Hague awarded Louboutin a preliminary injunction against Van Haren, ordering the brand to cease its manufacturing and selling of black and blue shoes bearing red-soles, and to pay Louboutin’s court costs and legal fees.

The court held that Louboutin has not used the red sole purely for decoration, but has utilized the mark in a consistent and sustainable way on all its high heel shoes. For this reason, the public identified the red sole mark with a certain designer (Louboutin, that is) and thus, Van Haren’s red soled shoes caused confusion amongst the relevant public.

Van Haren appealed this decision and in March 2014, the Courts of Appeals is referring the case to the Court of Justice of the European Union to determine whether Louboutin’s trademark is valid. In particular, the CJEU will be comparing the the scope and applicability of certain sections of the European Trademark Directive (the body of laws of the EU Member States relating to trademarks) with the Benelux trademark registration of Louboutin’s trademark – the latter of which refers to Louboutin’s registration specific to The Hague, Netherlands.

So, as of now, it seems the validity of Louboutin’s mark in the Netherlands is very much undecided.