Highly anticipated, widely misinterpreted and surely much talked about: another chapter in the case of Christian Louboutin's red sole trade mark has come to a conclusion.
The trade mark in question is Benelux trade mark No. 0874489, as seen on the picture and described as follows: "The mark consists of the colour red (Pantone 18-1663TP) applied to the sole of the shoe as shown (the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark)."
Those who have read my previous article on that topic and the recent Louboutin case C-163/16 ( http://inspiredthinking.dehns.com/post/102epuj/louboutin-on-the-toes-again) might remember that The Dutch Court of Appeal had sought a preliminary ruling from the Court of Justice of the European Union ("CJEU") in the context of a counterclaim by Dutch footwear brand Van Haren, who are defending themselves against an infringement action by Louboutin by claiming that Louboutin's trade mark is not validly registered, because the red sole could not be a trade mark based on the absolute ground of refusal of Article 3(1)(e)(iii) of Directive 2008/95/EC. The CJEU was asked to interpret the notion of that Article which prohibits trade mark registration of "signs which consist exclusively of the shape which gives substantial value to the goods".
As reported in my previous article, earlier this year on 7 February 2018 Advocate General, Maciej Szpunar handed his opinion to The Court stating that according to him Article 3(1)(e)(iii) of Directive 2008/95/EC should be interpreted as being capable of applying to a sign consisting of the shape of a product and seeking protection for a certain colour, with the consequence that a red sole would fall under an absolute ground of refusal and could not be a trade mark.
The Court, to the surprise of some and to the satisfaction of others, did not as usual follow the opinion of the Advocate General, and has now released its decision stating that Article 3(1)(e)(iii) of Directive 2008/95/EC must be interpreted as meaning that a sign consisting of a colour applied to the sole of a high-heeled shoe, such as Christian Louboutin's, does not consist exclusively of a "shape" within the meaning of that provision. This means that the red sole is registrable as a trade mark because even though it is a sign that involves a shape, it is not affected by an absolute ground of refusal. The Court has decided that the red sole trade mark registration did not seek to protect a shape but sought to protect the application of a colour to a specific part of the product. The fact that the specific part of the product also determines the shape of the colour by determining its outline, was not seen as sufficient to evaluate it as being exclusively a shape. In simple words: No, the red sole is more than just a shape, it is a coloured shape positioned at a specific part of the product, and thus a position mark.
So, fashion is breaking creative boundaries, not only under the aspect of aesthetics but also under the aspect of shaping the interpretation of law, according to modern methods of branding and the perception of the consumer. Louboutin's red sole is one example, Virgil Abloh's Off-White trade marks consisting exclusively of stripes or arrows are another. The possibility to register new forms of trade marks such as pattern, motion, multimedia and hologram trade marks will surely contribute to fan the creative flames of branding even further and require intellectual property law to align the interpretation of norms accordingly.
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