11 July 2018

The red soles of Christian Louboutin’s high heeled shoes have enabled the public to attribute a shoe to its creator Christian Louboutin since he famously painted the soles of a pair of heels red in 1992, using an assistant’s nail varnish. Mr Louboutin has sought to protect his mark in many different jurisdictions, with mixed results. This decision strengthens the brand’s position in Europe.

The Facts

In 2009, Mr Louboutin filed a trade mark for the application of the colour red to the sole of a shoe (Benelux Trade Mark No. 0874489). This was then limited to application on ‘High-heeled shoes’ (other than orthopaedic shoes). The application for the registration of the trade mark specifically stated that ‘the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark’.

In around 2012, Van Haren, a Dutch high street chain, began to sell high-heeled women's shoes with red soles at a much lower price than Louboutin.

Mr Louboutin initiated proceedings in the Netherlands claiming that Van Haren had infringed his trade mark and the court found in his favour (in part).

Van Haren challenged the judgment, claiming that the trade mark was invalid because the mark consisted solely of a two-dimensional figurative (i.e. shape) mark that consisted of a red coloured surface. The appeal court stayed the proceedings and referred the following question to the European Court of Justice:

Is the notion of ‘shape’ … limited to the three-dimensional properties of the goods, such as their contours, measurements and volume (expressly three-dimensionally), or does it include other (non-three-dimensional) properties of the goods, such as their colour?’

In short, did the fact that the colour was applied to a specific part of the product result in the sign consisting of a shape?

The Outcome

The ECJ ruled that the Mr Louboutin’s trade mark did not fall within the absolute grounds of refusal. The mark did not consist ‘exclusively of the shape'.

The mark was not seeking to protect the shape, solely the application of a colour to a specific part of the product.

The clear description of Louboutin’s mark assisted here; it explicitly stated that the contour of the shoe did not form part of the mark and was intended purely to show the positioning of the colour. The main element of the sign in this case was clearly the colour and the mark could therefore not be considered to consist ‘exclusively’ of a shape.

The case will now go back to the District Court in the Netherlands for a final ruling.

What does this mean for brand owners?

Colour can be a key part of a brand’s distinctiveness and the Court’s common sense approach in this case will be welcomed by brand owners. The decision also highlights the importance of getting your trade mark application right in the first instance. The fact that Louboutin’s mark explicitly stated that the contour of the shoe did not form part of the mark clearly assisted the Court in reaching its conclusion.

Please contact Jeremy Dickerson, Emily Roberts or your usual intellectual property team contact if you would like to know more.

Key contact

Jeremy Dickerson

Jeremy Dickerson Partner

  • Head of International 
  • Head of Intellectual Property, Media and Sport
  • Defamation and Reputation Management

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