There is a new development in the long running litigation concerning Louboutin’s red sole trade mark.
Stemming from an infringement matter brought by Louboutin against Van Haren Shoenen, a Dutch shoe retailer who sold heeled shoes with a red sole, Louboutin has now sought a preliminary ruling from the Court of Justice of the European Union, asking whether the definition of ‘shape’ within Article 3(1)(e)(iii) of Directive 2008/95 (‘the Article’) is limited to three-dimensional elements of a product or can also include two-dimensional elements such as a colour.
The question arises because the Article states that “signs which consist exclusively of the shape which gives substantial value to the goods” shall not be registered, or if registered shall be liable to be declared invalid. The Article does not mention colour.
Van Haren contends that it is the shape of the red sole that adds substantial value to the product, and therefore the trade mark should be declared invalid. Louboutin has countered that the Article should apply, because the exception refers purely to shape and the substantial value is due to the coloured sole alone, which distinguishes the product.
As reported in the IP Kat, ‘not all language versions of the directive speak of ‘shape’. Indeed, the French version refers to ‘forme’, the German version speaks of ‘form’, and the Italian version speaks of ‘forma’. In Italian a ‘forma’ is not necessarily three-dimensional, but can also be two-dimensional, and the same is true in French and German as well.’
The question arises whether this means that the word “shape” as interpreted in English and possibly in Dutch is unfairly restrictive in comparison to its European equivalents.
The Court’s response will be of key interest, given the ramifications it could have for the protection of shapes and colours as trade marks in the EU.