The matter at hand
French high-end shoe designer Christian Louboutin is the proprietor of a Benelux trade mark for high-heeled shoes consisting of the colour red applied to the bottom of the sole, in the manner as depicted in the figurative element of the mark.
Following the sale by Van Haren, a Dutch shoe retailer, of high-heeled women’s shoes with red soles, Christian Louboutin filed claims against it on the basis that it had infringed his trade mark rights. In the following proceedings, Van Haren claimed that the mark at issue was invalid, inter alia on the basis of the Benelux implementation of Article 3(1)(e)(iii) of Trade Mark Directive 2008/95Directive 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, i.e. the ground of exclusion for ‘signs which consist exclusively of the shape which gives substantial value to the goods’.
In assessing this claim, the Rechtbank Den Haag (the Regional Court of The Hague, the Netherlands) was of the opinion that the red sole gives substantial value to the shoes. In addition, it considered that, since the mark at issue consists of a colour which is applied to the sole of a shoe and is thus also an element of the product, the question arises whether the concept of ‘shape’, within the meaning of the aforementioned ground of exclusion, is limited solely to three-dimensional properties of a product, such as its contours, measurements and volume, or whether that concept also covers properties that are not three-dimensional, such as colour.
The judgment of the ECJ
The ECJ first finds that the concept of ‘shape’ in the context of trade mark law “is usually understood as a set of lines or contours that outline the product concerned” (paragraph 21) and that it does not follow from “the case-law of the Court, or the usual meaning of that concept, that a colour per se, without an outline, may constitute a ‘shape’” (paragraph 22).
In assessing whether the fact that a particular colour is applied to a specific part of the product concerned may nonetheless result in the sign at issue consisting of a shape within the meaning of the aforementioned ground of exclusion, the ECJ considers that it cannot be held that “a sign consists of [a] shape in the case where the registration of the mark did not seek to protect that shape but sought solely to protect the application of a colour to a specific part of that product” (paragraph 24).
As the ECJ establishes that “the mark at issue does not relate to a specific shape of sole for high-heeled shoes” (paragraph 25), it concludes that a sign, such as that at issue in the main proceedings, cannot be regarded as consisting ‘exclusively’ of a shape (paragraph 26).