Following the Advocate General's opinion on 22 June 2017 (click here for our blog on this), the Christian Louboutin red sole case now appears to be taking a step in another direction with the CJEU deciding to re-open the oral case. The order (only published in Dutch and French) states that the case will be re-assigned to the Grand Chamber due to issues of principle concerning European Union trade mark law. There are no more specific facts about the substantive issues. All we really know is that a hearing has been scheduled for 14 November 2017 (see here).
As a quick re-cap, the case concerns Article 3(1)(e)(iii) of the Trade Marks Directive (2008/95/EC) which prevents registration of any sign which consists exclusively of a "shape which gives substantial value to the goods". A Dutch retailer challenged the validity of Louboutin's 2010 Benelux red sole mark (image below) arguing that the colour conformed to the shape of the shoes and gave them substantial value so should not be registered. The Dutch court referred to the CJEU for a preliminary ruling, asking whether the concept of ‘shape’ is limited to three-dimensional properties of the goods, such as their contours, measurements and volume, or whether it includes other (non three-dimensional) properties of the goods, such as their colour.
AG Szpunar drew a distinction between colour marks per se (which would not fall within the scope of Article 3(1)(e)), and marks where a colour was integrated into the shape of the goods (which did fall within the scope of Article 3(1)(e)). His guidance was that whilst the mark did not relate to the shape of a shoe per se, it did relate to certain aspects of that shape, which enabled consumers to recognise it as high-heeled women’s shoe and could therefore "potentially be caught by the prohibition contained in Article 3(1)(e)(iii)".
AG Szpunar also noted that his approach was supported by the new Trade Marks Directive (2015/2436), Article 4(1)(e) (which must be implemented by January 2019) which refers to "the shape, or another characteristic, which gives substantial value to the goods". These "other characteristics" could include colour.
We will of course be sure to keep you on the front foot in relation to any developments after the November hearing.
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