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 image: Pursuitist image: Pursuitist

Following a heated legal battle with Yves Saint Laurent that ended in 2012, Christian Louboutin’s red sole trademark has led to legal battles across the globe … in Switzerland, in France (against Zara), in Belgium, in China, and so on. One such war got its start not even a year after the final ruling in Louboutin v. YSL when Louboutin – which is famous for its Chinese red shoe soles – initiated a long(ish)-running dispute with Van Haren, after the Dutch footwear brand launched a collection of high-heeled footwear, entitled, “Fifth Avenue by Halle Berry,” in 2012, featuring red soles.

Louboutin responded with a trademark infringement lawsuit, claiming that the rival footwear maker was confusing consumers and purposefully looking to profit from the established appeal of its own world-famous red sole. Louboutin had, after all, registered its red sole trademark in the Benelux region in 2010, seeking to protect the signature red color of the sole of its shoes. In 2013, it applied to register a trademark that specifically extended to its use of red sole on high-heeled shoes.

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 Advocate General Maciej Szpunar, who was tasked with determining whether protection under the European Trademark Directive extends to “non three-dimensional properties of the goods, such as their color.”

This past June, AG Szpunar issued an opinion stating 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).

Still unanswered as of June? Whether the combination of a color and a shape may be refused trademark protection.

AG Szpunar issued his second Opinion in the case on Tuesday, holding – more broadly – that “the prohibition set out in the trademark directive is capable of applying to a sign combining colour and shape,” and thus, “a trademark combining color and shape may be refused or declared invalid on the grounds set out under [European Union] trade mark law.”

According to his Opinion (as summarized in a release by the CJEU), AG Szpunar “expresses 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.”

In addressing European Union law that states that a trademark can be refused or invalidated “where its characteristics give substantial value to the goods,” AG Szpunar stated that he is “sympathetic to the view put forward … by Louboutin and the German government that the appeal of aesthetic characteristics has its own dynamic, and that the characteristics sought and valued by the public may vary in line with fashion trends.”

However, in closing he asserted that any decision on the trademark’s validity should not take into account the “attractiveness of the goods flowing from the reputation of the mark or its proprietor.” To this, Christian Louboutin has argued in the past that “the shiny red color of the soles has no function other than to identify to the public that they are mine.”

The larger CJEU panel will now consider AG Szpunar’s Opinion – which is, of course, non-binding – and rule in the coming months. Regardless of its decision, Louboutin maintains protection over its red sole in an array of jurisdictions, including the U.S.

* The case is Christian Louboutin, Christian Louboutin SAS v Van Haren Schooner BV, Case C‑163/16.