Posted on Monday 12 February 2018 by Cruickshank Intellectual Property

Louboutin shoes are known for sleek design and their iconic red sole. Adored by celebrities and fetching a rather high price tag, Christian Louboutin has developed a signature style to his brand over the years. However, this red sole design has found itself in many trade mark battles over the years and early last week found itself back in the media spotlight following a long running dispute with a Dutch shoemaker based in the Netherlands.

The dispute dates to 2012 when Van Haren Schoenen released its own shoe with a red sole, leading Louboutin to sue the shoemaker for trade mark infringement against his trade mark in the Benelux region. The ruling in the case was a quick victory for Louboutin and lead to Van Haren having to stop manufacturing and selling their red soled shoes. Soon after, Van Haren applealed the decision and the case found itself in the Court of Justice of the European Union (CJEU) where it continues. Van Haren has challenged whether the red sole is a valid trademark under EU trademark law.

AG gives his opinion

Last week Advocate General of the CJEU Maciej Szpunar gave the opinion that the trade mark could in fact be deemed by the courts as invalid due to the combination of both shape and colour. Article 3(1)(e)(iii) of Directive No. 2008/95/EC states ‘the shape which gives substantial value to the goods’ should in fact not be registered or if already so should be deemed invalid.

However, following media reports over the past week, Christian Louboutin released a statement after what he believed was ‘fake news’ being reported by some of the press. While some reports have suggested that the AG opinion will greatly affect their trade mark, Louboutin disagrees. Rather he believes that the AG ‘supports trademark protection for our famous red sole, rather than threatening it.’ This belief is due to the fact that the AG in his statement writes ‘The concept of a shape which ‘gives substantial value’ to the goods … relates only to the intrinsic value of the shape, and does not permit the reputation of the mark or its proprietor to be taken into account.’ Therefore, that would mean that the shape of the outsole where the red colour is applied is not intrinsically valuable. According to Louboutin it has been their own marketing efforts which have built their reputation and public association with the red sole.

While the AG has given his opinion, it does not constitute the Court’s decision. If they believe the trade mark is not valid it leaves Louboutin unable to prevent competitors from designing similar red soled shoes leaving this famous brand in a vulnerable position. It leads to questions regarding what can and cannot be a trade mark in an industry famous for distinct styles and designs and also raises the challenges which occur when attempting to trade mark a colour.  The court decision will have far reaching consequences on not just the fashion industry but on trade mark law itself and is one case which will be watched with interest.