On 20 March 2014, the President of the Brussels Commercial Court (Voorzitter van de rechtbank van koophandel/Président du tribunal de commerce) ruled on a dispute between Christian Louboutin ("Louboutin"), the well-known French designer of luxury shoes, and Van Dalen Footwear B.V. ("Van Dalen"), a Dutch retail shoe store, with respect to the alleged violation by Van Dalen of a Benelux word and figurative trade mark held by Louboutin. The trade mark at issue had been registered by Louboutin on 28 December 2009 (no. 0874489) covering "high-heel women's shoes with a red sole", designated as "shoes" in class 25.

In August 2013, Louboutin became aware that Van Dalen was selling red-soled high-heel women's shoes and initiated cease-and-desist proceedings requesting the Commercial Court to order Van Dalen to cease the sale of the allegedly offending shoes on the basis of its trade mark rights. In turn, Van Dalen filed a counterclaim challenging the validity of Louboutin's trade mark.

The Brussels Commercial Court rejected Louboutin's action and found its trade mark to be invalid. The Commercial Court established that Louboutin's trade mark had to be classified as a three-dimensional trade mark ("shape trade mark"), rather than a position trade mark (i.e., a trade mark which does not offer protection for the sign as such, but rather for the specific position of the sign on the product) or colour trade mark. The Commercial Court rejected Louboutin's arguments regarding the qualification as a position trade mark and added that it was also not clear from the trade mark registration that Louboutin had sought to register a colour trade mark.

Having established the nature of the trade mark, the Commercial Court then had to examine whether the shape mark fell outside the absolute grounds for refusal contained in Article 2.1(2) of the Benelux Convention on Intellectual Property Trademarks and Designs. This provision excludes trade mark protection for any shapes (meaning any characteristics), which either (i) result from the nature of the goods; or (ii) give a substantial value to the goods; or (iii) are necessary to obtain a technical result.

Based on the evidence brought by Van Dalen, the Commercial Court held that the design of high-heeled shoes is a very important criterion for the consumer, which certainly holds true for Louboutin's shoes, as the price for these shoes is considerably higher than the average price of women's shoes. In this case, the red soles are thus a primary selling point of Louboutin's shoes, even more so as consumers stated that they would not have paid as much for their shoes if they had not had the red soles. Therefore, the Brussels Commercial Court found that the red sole gives the goods their substantial value and that, as such, the red sole does not qualify for trade mark protection.

Since Louboutin's trade mark was regarded as a shape mark, the Brussels Commercial Court also considered that it had to examine whether the shape significantly departed from the norm of the sector so that it could serve as an indication of origin of the goods in question. In the case at hand, the Brussels Commercial Court held that Louboutin's shape mark lacks distinctive character because red-soled shoes are common on the market and, as such, the red sole would not necessarily indicate that such shoes originate from Louboutin.

This judgment has been criticised for its very short and opaque analysis of the notion of substantial value. It goes against last year's injunction decision given by the District Court of The Hague (Rechtbank 's-Gravenhage) in The Netherlands. The latter held that Louboutin's trade mark could not be denied protection on the basis of giving the product substantial value and that it had obtained distinctive character by means of public acceptance.

Louboutin has appealed against the judgment of the Brussels Commercial Court.

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