When is a colour not just a colour? Advocate General's opinion on the colour red applied to the soles of shoes
Background
When the designer Christian Louboutin first applied nail varnish to the sole of a stiletto shoe, little did he realise the uphill struggle that would ensue in obtaining and maintaining trade mark protection for the red sole. Several years and many countries later, the designer has successfully achieved registration of the red sole as a trade mark in some parts of the world, whereas in others, registration, and the ability to take action against copycats has been elusive.
This latest development in the red sole saga concerns 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)":
Louboutin commenced proceedings against Van Haren Schoenen BV (a Dutch shoe retailer) due to Van Haren's sale of shoes with red soles. The initial judgment was in Louboutin's favour, so Van Haren challenged the validity of Louboutin's trade mark, under 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". Van Haren argued that the colour red conforms to the shape of the shoes and gives them substantial value.
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.
Advocate General's opinion
Advocate General (AG) Szpunar delivered his opinion on 22 June 2017.
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)).
While it is for the referring court to decide which type of mark it is dealing with, AG Szpunar provided guidance for the court in making its assessment, noting that Louboutin's mark does not seek protection for the colour red in abstract, but for use on the sole of a high-heeled shoe, as represented. Whilst the mark does not relate to the shape of a shoe per se, it does relate to certain aspects of that shape, which enable consumers to recognise it as high-heeled women’s shoe. AG Szpunar concluded that "the mark at issue should be regarded as [a] sign of that type, combining colour and shape, [and therefore] the mark would 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) (not yet in force) which refers to "the shape, or another characteristic, which gives substantial value to the goods". These "other characteristics" could include colour.
The AG also considered the meaning of the words "gives substantial value to the goods" within Article 3(1)(e). He was of the view that this relates only to the intrinsic value of the shape, and that the reputation of the mark or its proprietor must not be taken into account when making the assessment.
Comment
If the CJEU follows AG Szpunar's opinion, there is a risk that Louboutin may lose its Benelux registration. The outcome is likely to turn on whether the application of the colour red to the sole of the shoe is found to give substantial value to those shoes. It may prove difficult to separate out this notion of value deriving from the shape and colour of the sole from the existing reputation which Louboutin and the red sole enjoys amongst consumers.