A major setback may be in store for shoe designer Christian Louboutin as the European Court of Justice has suggested that a trademark combining colour and shape may in fact be invalid. The French designer is currently locked in a court battle in the Netherlands to stop a Dutch high street chain, Van Haren, from selling copycat cat versions of his shoes.
The case dates back to 2012 when Van Haren introduced a new line which included high-heeled shoes with red soles as as of today, it seems that Christian Louboutin could lose the right to trademark his famous red soles.
Acquiring rights over colours is a fascinating battle-ground between the Courts and international brands. Court adviser Lucy Harrold told us that “the Courts are keen to keep some things in the public domain such as colours, shapes, geographical locations so they can be used by all traders and creators.”
Louboutin’s trademark covers “the colour red (Pantone 18 1663TP) applied to the sole of a shoe”.
The brand wants to protect what they consider their distinctive and valuable creations. However, the outcome of such disputes usually turns on the evidence of whether or not the public has come (over a substantial period of time) to view the particular Pantone colour shade as denoting the source of those goods.
If you see a red soled shoe do you think it could only have come from Christian Louboutin or not?
In this case, there is the added complexity of the combination of claiming the colour in a particular shape (the sole of the shoe) which may be excluded from trade mark protection.
“Examples of shapes excluded from protection on the same ground are the London black cab, the Tripp Trapp chair & Bang & Olfson speakers on the grounds that the shapes give those products “substantial value” and therefore cannot be protected by registered trade marks.” Said court adviser Lucy Harrold.
It is not over yet for Louboutin but the CJEU is likely to err on the side of resisting a monopoly over this particular colour/shape and rely on the shape exclusion to get them out of the colour bind.