UK: "Louboutin On The Toes Again" *

Last Updated: 8 February 2018
Article by Barbara Niemann Fadani

*(quote from the song "Send it up" by Kanye West)

Now that the advocate general at the Court of Justice of the European Union (CJEU) has handed down his second opinion, on whether the red sole trade mark is inaccordance with EU law, I feel it is time to look into the history of red sole lawsuits, for all those who got a bit confused over the years as to what has been decided by whom, where and why.

Whilst we probably all agree that we want to own as many of them as possible, because Louboutin's red soles are the ultimate luxury accessory for the female wardrobe, or "shoe goals" as the younger generation would put it, rarely has any other sign caused so much disagreement and confusion over its registrability and enforceability as a trade mark.

The most illustrious case took place in 2012 in the U.S.A, when Louboutin sued Yves Saint Laurent for trade mark infringement because Yves Saint Laurent presented a monochromatic red shoe with a red sole.

The lawsuit was not only illustrious because it involved a battle between two major players in the fashion world, but it was also most remarkable because both declared themselves winners in the end. The court decided that Louboutin's red sole was a valid and enforceable trade mark, but only when the rest of the shoe was in a contrasting colour, because the contrast between the sole and the upper, that causes the sole to "pop", was the element which distinguished it as a Louboutin shoe. Yves Saint Laurent thus remained free to continue marketing the monochromatic red shoe with a red sole.

In Switzerland, the courts took a different view. In February 2017, the Federal Supreme Court of Switzerland in Lausanne found that the red sole had merely aesthetic and decorative value and was not of distinctive character, so trade mark protection was denied.

As recently as last December, in India, the Delhi High Court declared Christian Louboutin's 'red sole' a well-known trade mark.

Christian Louboutin also holds red sole trade marks in Australia, China and Russia.

In Europe, Christian Louboutin obtained registrations of the red sole trade mark in the Benelux in 2010 and 2013, and in the UK in 2009.

An application was filed with the EUIPO in 2010 (CTMA No. 8845 539), but was refused because the examiner found the trade mark to be devoid of distinctive character. Upon appeal by Louboutin, the EUIPO Board of Appeal accepted the trade mark application, because the colour red applied to the sole of a high-heeled shoe departed significantly from the norms or customs of the sector and, furthermore, the distinctive character was corroborated by evidence that it was perceived in the market as indicating a commercial origin. The story was not over though.

The German shoe producer Roland-Schuhe GmbH & Co. KG filed an opposition against the application based on International Registration No. 920 225 for the mark "my shoes", being a stylized mark prevalently featuring the colour red. The opposition and its appeal were dismissed, based on a finding that the signs were not similar.

Roland-Schuhe GmbH & Co. KG proceeded with an action to the General Court, which confirmed the Board of Appeal's decision. So too did the Court of Justice, and the red sole trade mark was registered with the EUIPO on 10 May 2016. However, the story still was not over.

In April 2013, Louboutin went back to court in a dispute against Dutch footwear brand Van Haren Schoenen B.V., filing a lawsuit to get a preliminary injunction in respect of an alleged infringement of the red sole trade mark. The lawsuit was based on Louboutin's Benelux registration. Van Haren had sold shoes with a red sole under their own brand. The District Court of The Hague awarded the preliminary injunction.

Van Haren appealed the decision and, once again, the red sole trade mark appeared in front of the Court of Justice of the European Union (Case C‑163/16), this time on the question of whether or not the red sole is a valid trade mark under EU trade mark law. The Dutch Court of Appeal (Rechtbank Den Haag) had sought a preliminary ruling on this question in the context of Van Haren´s defence that Louboutin's trade mark was not validly registered.

In parallel, Van Haren had filed an application for a declaration of invalidity in respect of Louboutin's EU trade mark registration

In January 2018, another application for a declaration of invalidity in respect of Louboutin's red sole trade mark was filed with the EUIPO by Wolfgang Fuss, a German citizen. Both proceedings are currently suspended due to the pending CJEU case, because even though the Court of Justice will be deciding on the Benelux trade mark, the verdict will be decisive for the EU trade mark as well, as it will clarify for the first time the interpretation of the relevant Articles of Directive No 2008/95/EC and Regulation No. 207/2009, namely:

- the notion of "the shape" and "shape of the goods" within the meaning of Article 3(1)(e)(iii) of Directive No 2008/95/EC and Article 7(1)(e)(iii) of Regulation No. 207/2009;

- the notion of "signs which consist exclusively of" said shape of the goods within the meaning of said Articles;

- the notion of "substantial value to the goods" which is "given by the shape" within the meaning of said Articles.

In other words, is the absolute ground for refusal in Article 3(1)(e)(iii) of Directive No. 2008/95/EC, which states that a sign shall not be registered if it consists exclusively of the shape which gives substantial value to the goods, limited to the three-dimensional properties of the goods, such as their contours, measurements and volume (expressed three-dimensionally), or does it include other (non three-dimensional) properties of the goods, such as their colour?

The opinion of the European Court of Justice's advocate general, Maciej Szpunar, that was published on 7 February 2018, follows his first opinion of 22 June 2017 and states that Article 3(1)(e)(iii) of Directive 2008/95/EC "is to be interpreted as being capable of applying to a sign consisting of the shape of a product and seeking protection for a certain colour. The concept of a shape which 'gives substantial value' to the goods, within the meaning of that provision, relates only to the intrinsic value of the shape, and does not permit the reputation of the mark or its proprietor to be taken into account."

The advocate general´s opinion is a preliminary assessment of the case. It is not binding on the Court, but is usually it is a good indicator of the likely outcome.

So, there might not be a general consensus amongst the courts on the question of whether the red sole is inherently protectable as a trade mark, but Louboutin might risk a cancellation at a European level. A decision from the CJEU can be expected within the next few months, and we are all curious to see what alternative strategy Louboutin might come up with for obtaining protection for their mark.

"Louboutin On The Toes Again" *

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Marks & Clerk
Marks & Clerk
HGF Ltd
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Marks & Clerk
Marks & Clerk
HGF Ltd
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions