Christian Louboutin does not appreciate the widespread mis-reporting of the latest round in its case against Dutch footwear brand Van Haren. Following the release of a non-binding opinion from Court of Justice of the European Union (“CJEU”) Advocate General Maciej Szpunar, who took on the larger issue of whether the combination of a color and a shape may be refused trademark protection under European Union law, the media had a field day summarizing the significance of the latest development.
Headlines yesterday from some of the world’s most-read publications, “Court hands Dutch rival a win in legal battle for Christian Louboutin’s sole,” “Christian Louboutin Loses a Round in the Legal Battle Over Red Soles,” “No more sole use of red for Louboutin,” and “Christian Louboutin faces setback in fight to trademark red sole.” And now, Louboutin is calling foul.
While AG Szpunar stated in his opinion yesterday that “a trademark combining color and shape may be refused or declared invalid on the grounds set out under [European Union] trade mark law,” and while he “expressed doubts as to whether the color red can perform the essential function of a trademark, what he did NOT do is deal Louboutin a loss by invalidating the brand’s red sole mark, nor did the CJEU. In fact, the CJEU, as a whole, has not yet made its determination in the case.
As we reported yesterday, the latest decision from AG Szpunar could prove a setback for Louboutin, but that is only if the CJEU rules accordingly. In the case at hand, the CJEU panel of at least 3 judges will consider AG Szpunar’s Opinion — which is not binding — when they deliberate and decide in coming months whether “a trademark combining color and shape may be refused or declared invalid on the grounds set out under [European Union] trade mark law.” Only then will the case will return to the district court in the Netherlands for determination on whether Louboutin’s trademark is valid or not.
According to a statement from Louboutin today, “While ordinarily Christian Louboutin does not comment directly on pending matters, we are making an exception in this instance to correct what appears to be misleading reports of the opinion of M. Szpunar, Advocate General, which is seen to impact our trademark adversely. We disagree.”
A spokesman for the brand continues on to note, “The summaries of M. Szpunar’s opinion do not correctly reflect his view. The recent news seems to focus on M. Szpunar’s views that the combination of a color and a shape may be refused trademark protection. However, a close reading of the full opinion of M. Szpunar in fact supports trademark protection for our famous red sole, rather than threatening it.”
And the brand notes, in closing, “Advocate General Szpunar’s opinion is not a blow or a setback in Christian Louboutin protection of its famous red sole mark but is ultimately reinforcing our rights.”