To better distinguish themselves from rivals, businesses are increasingly often using colours to mark their goods or services. For example, we will have no problems recognising Milka chocolate by its lilac-coloured packaging, just as we recognise the characteristic red and white colours of PKN Orlen’s shops and fuel stations or the orange get-up of Orange mobile operator’s outlets. Because many brands are specifically associated with certain colours, a question arises if a colour as such (in addition to trade name, logo, etc.) may be registered as a trademark.

While theoretically possible, this feat is in practice achieved only by the largest and most recognisable few, such as Kraft Foods Schweiz Holding GmbH (Milka), Orange Brand Services Ltd. (Orange), Beiersdorf AG (Nivea), Mars Petcare UK (Whiskas). There is no doubt that in their case colour indeed is a powerful feature distinguishing their goods or services from those of the competitors in the marketplace.

A few years ago this elite group of owners of “colour” trademarks was joined by a fashion designer Christian Louboutin. No need to explain that this brand is famous for its stilettos with the characteristic red bottom, an object of desire for many women around the world. The popularity of Louboutin stilettos has prompted other players (including Yves Saint Laurent and the Spanish fashion company Inditex) to start marketing red-soled shoes. Furthermore, there are so many counterfeit Louboutins that the brand launched a special project called Stop Fake Louboutin to help monitor copycat products.

As part of its fight against shoe manufacturers offering their high heels with the characteristic Louboutin red bottoms, the brand took action to register the red sole as a Benelux trademark (in the end, only for “high-heeled shoes”). The application described the trademark as consisting of “the colour red applied to the sole of a shoe according to the picture (the shoe contour is not part of the trademark and only serves to depict the location of the trademark)”. Favourably for Louboutin, the mark was registered and Louboutin obtained the exclusive rights to it in Belgium, the Netherlands and Luxembourg. While this registration does not guarantee the total disappearance of competitive shoe models “a’ la Louboutin”, it will substantially facilitate trademark infringement actions by the brand.

Louboutin did not wait long to explore the opportunities opened by the trademark registration. Having taken notice that Dutch brand Van Haren sells high heels with “forbidden” red soles, Louboutin sued Van Haren before a lower court in the Hague (Rechtbank den Haag) for infringing his trademark. Although initially it appeared the famous brand was about to win, the scales are currently beginning to tip in favour of Van Haren. The Dutch defendant argues that Louboutin’s registered trademark should be invalidated. This argument put the Hague court in serious doubt so that it asked the EU Court of Justice (CJEU) for help in resolving the issue.

The Dutch court’s question for CJEU’s preliminary ruling was whether the contested Louboutin trademark consists solely of “the shape that gives substantial value to the goods”, in which case it is liable to be declared invalid under Article 3(1)(3)(iii) of Directive 2008/95/EC. In course of the CJEU proceedings, the Polish Advocate General Maciej Szpunar delivered two opinions on the issue, with the second one, which was submitted to CJEU on February 6th as a supplement to the first one, repeating his previous position that the contested Louboutin mark should “be equated with one consisting of the shape of the goods and seeking protection for a colour in relation to that shape, rather than one consisting of a colour per se.” In other words, AG considered that the mark meets the first prong of the invalidation test under Article 3(1)(3)(iii) of the Directive (consists of the shape). In terms of the other prong (gives substantial value to the goods), AG recalled that it is for the Dutch court to make the relevant findings of fact. However, he also assumed that the court’s view is that the mark does indeed meet that prong, as well.

In conclusion, AG said Article 3(1)(3)(iii) of the Directive applies to the mark and that, therefore, it should not have been registered in the first place but since it was, it should be invalidated. This conclusion is favourable for Van Haren and agreeable with its argument.

Although AG’s opinions are not binding on CJEU and the court may theoretically decide otherwise, its practice is to follow advocate generals’ views. But even if, for the sake of argument, Louboutin is considered to have merely sought to register a colour as such (rather than a colour strictly in combination with a sole shape), it would still be open to debate if his trademark should have been registered and brand monopoly granted. As observed by AG in his opinion, it should be doubted that such a trademark filed by Louboutin (colour itself) “can perform the essential function of a trade mark and identify its proprietor” (be distinctive).

Louboutin v Haren shows that trademark registrability of colours is not an easy matter and continues to be open to controversy. On the other hand, this is exactly why it is so interesting. We will surely follow and report on further developments in this now famous litigation. But one thing can be said even now: Louboutin’s loss will certainly have a huge impact on the industry and will increase his competitors’ eagerness to sell stilettos with the iconic red sole.

 

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Check what we refer to:

  • Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks – link;
  • Additional opinion of advocate general Szpunar delivered on 6 February 2018, Case C‑163/16, Christian Louboutin, Christian Louboutin SAS v Van Haren Schoenen BV – link.

 

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You are encouraged to read all our texts devoted to the fashion industry in connection with the Fashion Fair (21-22. February 2018, Poznań).