For those who may not have been privy to the long ongoing legal battle between Louboutin (a French footwear designer whose high-end stilettos incorporate shiny red-lacquered soles which has become his signature mark) and Dutch retailer Van Haren Schoenen, the dispute began when Louboutin sued Van Haren for selling high-heeled women’s shoes with red soles.

The initial decision went in Louboutin’s favour but Van Haren challenged the validity of Louboutin’s non-traditional trade mark registration for the application of the colour red to the sole of a high-heeled shoe as shown on the image (above, right) (also known as a ‘position mark’).

Van Haren argued that the registration was invalid on the basis of Article 3(1)(e)(iii) of Directive 2008/95/EC which provides that a sign shall not be registered or, if registered, shall be liable to be declared invalid in circumstances where the sign consists exclusively of the shape which gives substantial value to the goods (such as the shape of a cut diamond). Put another way, Van Haren claimed that the registration consists of a two-dimensional mark (the colour red) which conforms to the shape of the shoe and gives substantial value.

The Dutch Court took the view that, having regard to the graphic representation of the registration, as well as its description, the colour is inextricably linked to the shoe sole meaning, therefore, that the mark cannot be regarded merely as a two-dimensional figurative mark.

It further agreed that the sole does give substantial value to shoes marketed by Louboutin as that colour forms part of the appearance of those shoes and plays an important role in a consumer’s decision to purchase them.

As a result, following two Advocate General’s opinions (the latest opinion can be read online at https://dycip.com/louboutin) the CJEU was asked to consider whether the notion of ‘shape’, within the exclusions of Article 3(1)(e)(iii), is limited to the three dimensional properties of the goods in question, such as their contours, measurements and volume (expressed three-dimensionally), or broad enough to include other (non-three-dimensional) properties of the goods, such as their colour.

As the Directive provides no definition to the term ‘shape’, the meaning and scope of that concept had to be determined by, inter alia, applying the usual meaning of the word in everyday language.

In the context of trade mark law and as defined by the European Commission, ‘shape’ is understood as meaning a set of lines or contours that outline the product concerned.

Consequently, whilst the shape of a product (or part of it) plays a role in creating an outline for the colour, it cannot 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, instead, sought merely to protect the application of a colour to a specific part of that product. In this instance, the mark wasn’t related to a specific shape of sole for high heeled shoes since the description of the mark explicitly states that “the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark” (emphasis added). It could also not be said that the mark consisted ‘exclusively’ of a shape in circumstances where the main element of the sign is a specific colour designated by an internationally recognised identification code.

As a result, the CJEU ruled that a sign consisting of a colour applied to the sole of a high-heeled shoe, such as that at issue in the main proceedings, does not consist exclusively of a ‘shape’, within the meaning of Article 3(1)(e)(iii).

In short

Whilst position marks have in theory become an accepted and recognised form of trade mark following the implementation of the 2017/1001 Regulation in October 2017, they tend to be difficult to register. This decision may however provide some useful guidance that may assist in assessing the registrability of other position marks.