Louboutin – Trade mark invalid?

In his Opinion, the Advocate General at the Court of Justice of the European Union (EuGH) concludes that the trade mark of designer Christian Louboutin can be excluded from registration or declared invalid under EU trade mark law.

Louboutin stands for luxury-class women's shoes. They are distinguished not only by prices around €500, but also by a distinctive red sole, which is also registered as a trade mark.

Shoe enthusiast and main character of the series "Sex and the City", Carrie Bradshaw, helped the shoes achieve their cult status. It is hardly surprising that designer Christian Louboutin was not particularly pleased when the Dutch subsidiary of Deichmann, Van Haren Schoenen B.V., suddenly offered pumps with red soles for merely around €40.

Louboutin considered its trade mark rights infringed by the sale of red-soled women's shoes and sued for an injunction and damages. Van Haren filed a counterclaim for cancellation of the trade mark. The Dutch court thereupon requested a preliminary ruling on the relevant absolute ground for refusal.

The Court of Justice of the European Union (EuGH) (Case No.: C – 163/16) must now address the following question:

Does the concept of shape restrict itself to the three-dimensional characteristics of the goods such as their contours, dimensions or extent (expressed in three dimensions), or does this provision also encompass other (non-three-dimensional) characteristics of the goods such as colour?

After Advocate General Szpunar already submitted his first Opinion in June 2017, there was a change in the composition of the panel at the Court of Justice of the European Union (EuGH). After reopening of the oral hearing, the Advocate General adheres to his original position.

Opinion of Advocate General Szpunar

With Press Release of 06.02.2018 the Court of Justice of the European Union (EuGH) announced that Advocate General Merciej Szpunar upheld his position.

A sign combining colour and shape could fall within the prohibition contained in the Trade Mark Directive.

He therefore proposed to the Court of Justice of the European Union (EuGH) that it reply that the absolute grounds for refusal or grounds for invalidity can apply to a sign consisting of the shape of a product and claiming protection for a specific colour.

The Advocate General continues to maintain that the Louboutin trade mark is equivalent to a shape mark rather than a colour mark. In this respect, the trade mark could be subject to an absolute ground for refusal and could be declared invalid.

Conclusion

The Opinions of the Advocate General represent an impartial and independent proposal for a judgment. The Court of Justice of the European Union (EuGH) is not bound by this proposal. However, in most cases it follows the proposal. It remains to be seen whether the Court of Justice of the European Union (EuGH) shares this view. After all, the court in The Hague has to decide on the cancellation of the trade mark.