On 9 March 2016, The Hague District Court referred the Dutch
case on the validity of Louboutin's red sole trade mark to the
Court of Justice of the European Union ('CJEU'). The legal
proceedings in The Netherlands were initiated by Louboutin in 2013
claiming that Van Haren (represented by Taylor Wessing The
Netherlands) infringed the Benelux trade mark rights of Louboutin
by selling ladies shoes with high heels having red soles. The
Benelux trade mark registration of Louboutin is shown above left.
Pictures of the shoes offered by Van Haren are shown above
On 1 April 2015, the The Hague District Court rendered an
interlocutory decision in the matter, inter alia concluding that
the trade mark has characteristics of both a colour mark and a 3D
mark because the colour red is depicted (positioned) on the sole of
a high heel shoe. It also concluded that the trade mark has
acquired distinctiveness through Louboutin's use and that if
the trade mark is valid, Van Haren has infringed the trade mark
rights of Louboutin.
However, the court also ruled that the coloured sole gives
substantial value to the shoes. Van Haren had argued that, for that
reason the trade mark is invalid pursuant to Article 2.1(2) of the
Benelux Convention on intellectual Property (the equivalent of
Article 3(1) (iii) of the EU Trade Mark Directive 2008/95/EC).
According to the court it is however unclear whether the
definition of 'shape' is limited to 3D characteristics of
(parts of) the goods (like contours) or if it also applies to other
non 3D characteristics such as colour as Van Haren had argued.
After both parties had the opportunity to inform the court of
their position on a proposed preliminary question being referred to
the CJEU, the court decided on 9 March 2016 to ask the following
(freely translated) question to the CJEU:
"Is the definition of 'vorm' in Article 3(1)
(iii) of the Trade Mark Directive 2008/95/EC (in the German,
English and French versions of the Directive called 'Form',
'shape' and 'forme') limited to the three
dimensional characteristics of the goods such as contours,
measurements and the volume thereof, or does it also applies to
other (non-three dimensional) characteristics of the goods such as
It will be interesting to see whether the CJEU will decide if
the shape mark exceptions also apply to characteristic of a shape
such as colours, including whether or not these exceptions, now
broadened in the new Directive (Article 4 of the Trade Mark
Directive (2015/2436/EC) explicitly mentions 'the shape, or
another characteristic'), also apply to the old Directive. In
other words; can a characteristic of the shape of a trade mark give
substantial value to the goods and by doing so prevent such
characteristics being protected under trade mark law? If this were
not the case, according to the District Court, it would result in
the possibility for trade mark owners to prevent competitors using
characteristics such as colours which are sought and appreciated by
the public, and this appears to be in conflict with the rationale
of the shape exceptions.
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