The trademark in the form of colour of the shoe sole is not covered by the ban on registration of shapes – the European Court of Justice ruled.
The French fashion designer, Christian Louboutin, won the long court battle for his legendary red patent leather soles, which are his identification mark.
Everything started with Christian’s assistant and her liking for polishing her nails at work. This made him paint the soles of the shoes he was designing red for the first time, in 1992 (using nail polish borrowed from his assistant). He believed this colour to be particularly feminine and suitable for each and every stylization.
Classical Christiana Louboutin stilettoes are desired by women all over the world. No wonder the fashion designer has been making an effort for many years to protect his rights, as a result of which in 2009 he registered his work in the form of a red shoe sole as a trademark.
A year ago we described on our blog  the background of the dispute which arose in 2012 between a Dutch shoe manufacturer, Van Haren, and Christian Louboutin. The French fashion house accused the Dutch manufacturer of violation of a registered trademark in the collection “Fifth Avenue by Halle Berry” launched on the market, which included high heels with a red sole.
Christian Louboutin demanded that Van Haren remove the shoes which infringed his rights from the market. When the negotiations brought no result Christian Louboutin filed a claim with the District Court in The Hague, alleging that the Dutch manufacturer breached a registered trademark in the form of a red shoe sole. Van Haren defended its case claiming that European law prohibits registration of shapes if they significantly increase the value of products.
The Dutch court had interpretative doubts as to the „concept of a shape increasing the value of the product” and addressed a pre-trial question to the European Court of Justice, namely how should the phrase be understood and whether it is only limited to three dimensional features of the products such as its contours, size and volume, or does it also embrace other product features such as colour.
On 12 June 2018 the European Court of Justice issued a decision in favour of the French designer. It found that the trademark to which the dispute pertains is not the shape but the place where the specific colour was applied, on a particular part of the shoe, which means that Christian Louboutin was entitled to register the red sole as a trademark (which nonetheless applies only to the colour Pantone 18‑1663TP red).
According to the ECJ judgment of 12 June 2018 in C‑163/16 (EU:C:2018:423), Article 3 sec. 1 point e) subpoint (iii) of the Directive of the European Parliament and Council 2008/95/EC of 22 October 2008 aimed to approximate the laws of the Member States relating to trademarks is to be interpreted to mean that a mark representing the colour applied to the sole of a high heeled shoe, such as the one considered in the main proceeding, does not constitute „shape” within the meaning of that provision.
Contrary to standard practice in the proceedings before the European Court of Justice, in this case the judgment was delivered in contradiction to the position of the advocate general of the Court, who issued two opinions against Christian Louboutin regarding this issue during the past year. In his opinion of 22 June 2017 as well as in the supplementary opinion of 6 February 2018  Maciej Szpunar consistently proposed that the European Court of Justice take a contrary position, denying the right to register the red colour as a trademark due to its inseparable connection with the shape of the product, which, pursuant to European law, cannot be registered.
The matter will be finally determined by the District Court in The Hague. However, in issuing its final decision the Dutch court is obliged to adopt the construction presented of the European Court of Justice.
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