After a lengthy trade mark dispute, French shoe designer Christian Louboutin has been given the green light for his famous red soles by the Court of Justice of the European Union (CJEU). In a perhaps unexpected decision in Louboutin's favour, the CJEU indicated that the red soles are capable of protection as a trade mark within the EU.

The judgment could be seen to signal a change in direction of the courts in connection with colour marks. Typically, the courts have been reluctant to allow registration of colours, taking the position that consumers are not accustomed to perceiving colours as trade marks - that is, they may not perceive a colour as a sign which designates the origin of goods or services of a specific undertaking.

However, far from opening the floodgates, the case may have a more limited impact than it first appears. Rather than dealing with the question of whether the trade mark in question was distinctive and would be perceived as a trade mark, the decision centred on whether the mark fell within a specific exclusion for shape marks.

Red letter day - the CJEU decision

Louboutin has a trade mark in the Benelux, amongst other territories, for the colour red, 'applied to the sole of a shoe'. The trade mark provides a graphical representation of how the colour would be applied to a high heeled shoe, with the disclaimer that 'the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark'.

The CJEU had been asked by a Dutch court to consider whether Louboutin's trade mark in the Benelux for the colour red was valid, or whether the mark fell within one of the absolute grounds for refusal of protection for shape marks. Under EU law, Article 3(1)(e) of Directive 2008/95 (the former Trade Mark Directive) states that a sign shall not be registered as a trade mark (or, if it has been registered, shall be liable to be declared invalid) if it consists exclusively of 'the shape which gives substantial value to the goods'.

The CJEU has now ruled that Louboutin's trade mark does not consist exclusively of a 'shape', and therefore does not fall under the exclusion for protection. The case will now be referred back to the Dutch court, which is expected to uphold the validity of the mark.

The decision departs from the non-binding Opinion of Attorney General Szpunar, published in February this year, which suggested that Louboutin's mark could be classed as a combination of a shape and colour mark. As a result, Attorney General Szpunar advised that Louboutin's mark could be declared invalid under the absolute ground for refusal.

Instead, the CJEU took the usual meaning of the word 'shape' to be 'a set of lines or contours that outline the product concerned'. On the basis of this definition, the Court concluded that a colour per se, without an outline, clearly does not constitute a 'shape'.

In particular, the Court gave weight to the fact that Louboutin's mark specifically indicated that the representation of the shape of the shoe was only to show how the colour would be applied. It held: 'while it is true that the shape of the product or of a part of the product plays a role in creating an outline for the colour, it cannot, however, be held that a sign consists of that shape in the case where the registration of the mark did not seek to protect that shape but sought solely to protect the application of a colour to a specific part of that product'.

Consequently, the Court declared that a sign consisting of a colour applied to the sole of a high-heeled shoe, such as Louboutin's mark, does not consist 'exclusively' of a shape and therefore falls outside of the absolute ground for protection within the former Trade Mark Directive.

A step in the right direction for colour marks?

The decision is a positive result for Louboutin, but prospective trade mark applicants should still take advice before filing an application for a colour mark.

The Louboutin case does not necessarily indicate that the courts will be more willing to grant registration of colour marks, or that the courts have accepted that consumers are becoming more accustomed to recognising colours as an indication of origin for goods and services. Instead, the CJEU in Louboutin answered a specific question, reaching the perhaps obvious conclusion that a colour is not a shape.

In addition, the question before the Court referred to the language of the former Trade Mark Directive, which prohibits a sign which consists exclusively of 'the shape which gives substantial value to the goods'. It must be noted that EU Directive 2015/2436 (the current Trade Mark Directive) amended this language to prohibit signs consisting exclusively of 'the shape, or another characteristic, which gives substantial value to the goods'. Whether colour marks such as Louboutin's could be prohibited as 'another characteristic' is yet to be seen.

For now, anyone wishing to register a colour mark should remain mindful of the difficulties they are likely to face in convincing the courts that their mark will be perceived as a trade mark. Still, as Louboutin and his high heels show - if the shoe fits, protecting a colour is still possible.

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