Regular blog readers may recall that we have been following the progress of an invalidity action against Louboutin's 2010 Benelux registration for "the colour red (Pantone 18 1663TP) applied to the sole of a shoe as shown (the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark)":
- Back in July 2017, we blogged on the Advocate General's Opinion regarding the colour red applied to the soles of the shoes. The original blog post can be found here.
- In October 2017, we recounted here that the Court of Justice of the European Union ("CJEU") had taken the unusual step of re-opening the oral case and re-assigning it to the Grand Chamber.
- In February 2018, we blogged here on the AG's Further Opinion.
- In June 2018, we reported here on the CJEU's surprising ruling, which did not follow the AG's Opinions, and held that the mark in question did not consist "exclusively of a shape".
On 6 February 2019, the court which originally referred the matter to the CJEU (Court of The Hague) issued its final judgment. The decision was a victory for Louboutin with the Court ruling that:
- Louboutin's red sole trade mark is valid;
- the other party - Van Haren Schoenen BV ("Van Haren") infringed Louboutin's trade mark; and
- Van Haren must cease all use of the red sole, and pay Louboutin damages, costs and penalties.
The decision is a resounding triumph for Louboutin, who has faced attacks against its red sole trade mark in a number of countries.
Is this the end of the red sole saga? Not quite…Trade Mark Directive 2015/2436 updates the ground which Van Haren sought to rely on to invalidate Louboutin's registration. Article 4(1)(e)(iii) of this new Trade Mark Directive states that signs which consist exclusively of the shape, or another characteristic (which includes colour), which gives substantial value to the goods are liable to be declared invalid. The implementation period for the Directive expired on 15 January 2019, but it has not yet been incorporated into Benelux legislation and so it is not clear whether it is applicable. The Court of The Hague did not consider the Directive relevant when coming to its decision, but debate regarding the applicability of the Directive is ongoing. It is therefore possible that Louboutin's registration may be challenged under this new ground once the Directive becomes part of Benelux law.
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