On 6 February 2018, Advocate General Szpunar (the "AG") issued a second opinion in the dispute opposing Christian Louboutin ("Louboutin") against Van Haeren Schoenen BV ("Van Haeren") (see VBB on Belgian Business Law, Volume 2017, No. 6, pp. 10 and 11, available at www.vbb.com) (the "Opinion").

The question referred to the Court of Justice of the European Union (the "ECJ") in this case is that of the validity of the Louboutin red sole as a trade mark. In particular, the referring court asked the ECJ whether the notion of 'shape' within the meaning of Article 3(1)(e)(iii) of Directive 2008/95/EC to approximate the laws of the Member States relating to trade marks (the "Directive") is limited to the three-dimensional properties of the goods or if it includes other, non three-dimensional properties of the goods such as their colour. The issue is of importance as this provision states that signs consisting exclusively of the shape which gives substantial value to the goods do not qualify for registration or are liable to be declared invalid.

After the AG's first opinion, the case was assigned to the Grand Chamber of the ECJ in October 2017. After hearing the interested parties, the ECJ invited the AG to present a new opinion on the issue.

In the Opinion, the AG maintained his original position that the Louboutin trade mark should be considered as a sign consisting of the shape of the goods (so that protection is sought for a colour in relation to that shape), rather than as a trade mark consisting of a colour per se.

The AG reasoned that, first, the shape of the sole is not wholly abstract but limited in space. Second, the colour red can hardly perform the essential function of identifying its proprietor when that colour is used separately from the shape of the sole. Hence, the shape matches the spatial delimitation of the colour.

The AG then clarified that the above conclusion is not altered by the new classification of "position marks" provided for in Implementing Regulation 2017/1431 on the applicability of Article 3(1)(e)(iii) of Directive 2008/95 (applicable as of 1 October 2017). A position mark is a trade mark consisting of the specific way in which the mark is placed on or affixed to the product. For the AG, the classification of a sign as a 'position mark' does not exclude that mark from falling within the scope of a ground for refusal or invalidity contained in Article 3(1)(e)(iii) of the Directive.

Similarly, the AG reiterated his previous view that the reference to "another characteristic of the product" added to Article 3(1)(e)(iii) of the Directive by Article 4(1)(e)(iii) of Directive 2015/2436 to approximate the laws of the Member States relating to trade marks (whose deadline for implementation is 14 January 2019) is merely a formal indication clarifying the law as it was. The AG added that the legal regime applicable to signs under both instruments is, according to the European legislator, identical.

Additionally, the AG replied to the argument put forward by Louboutin that because aesthetic characteristics vary in line with fashion trends, it is not essential that they remain available on a lasting basis. The AG considered that the inherent dynamic of the aesthetic characteristics of a product which give substantial value to that product does not impact his conclusion. The AG added that, although the public's perception of a shape could potentially be relevant in assessing whether the shape gives substantial value to the product at issue, the reputation of the trade mark or its owner does not.

The AG then offered additional considerations in the event that Article 3(1)(e)(iii) of the Directive 2008/95 would not apply. Referring to the Libertel case of the ECJ (case C-104/01), the AG explained that, when analysing the distinctive character of a sign inseparable from the appearance of a product, attention must be paid to the general interest that the availability of colours should not be unduly restricted, especially since the number of colours (and shades) that can be applied to the sole of a shoe in order to identify its origin is limited.

Lastly, the AG reiterated that the concept of a shape which 'gives substantial value' to a product only relates to the intrinsic value of the shape, so that no account has to be taken of the attractiveness of the product flowing from the reputation of the trade mark or its owner. However, the AG also specified that the classification of the trade mark at issue, and in particular whether the red colour of the sole gives substantial value to the Louboutin shoe, is a factual assessment to be made by the referring court.

The ECJ is expected to hand down its judgment in a few months' time.

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