IP Cases & Articles

Louboutin v Van Haren Schoenen: CJEU interpretation of Shape

Christian Louboutin v Van Haren Schoenen and the CJEU’s interpretation of ‘shape’ within Article 3(1)(e)(iii) of Directive 2008/95

Following two Advocate Generals' opinions in Louboutin v Van Haren Schoenen the CJEU considers whether the notion of ‘shape’ within the exclusions of Article 3(1)(e)(iii) of the Trade Marks Directive is limited to the three dimensional properties of the goods in question, such as their contours, measurements and volume (expressed three-dimensionally), or broad enough to include other (non-three-dimensional) properties of the goods, such as their colour.

The question was referred to the CJEU by the Dutch Court following Van Haren Schoenen’s claim that Louboutin’s trade mark registration for its iconic red sole was invalid on the basis that the mark consists exclusively of a shape which gives substantial value to the goods.

As the Directive provides no definition to the term ‘shape’, the CJEU stated that the meaning and scope of that concept must be determined by, inter alia, applying the usual meaning of the word in everyday language.

On that basis, ‘shape’, in the context of trade mark law and as defined by the European Commission, is understood as meaning a set of lines or contours that outline the product concerned. Consequently, whilst the shape of a product (or part of it) plays a role in creating an outline for the colour, it cannot be held that a sign consists of that shape in the case where the registration of the mark did not seek to protect that shape but, instead, sought merely to protect the application of a colour to a specific part of that product. In this instance, the mark wasn’t related to a specific shape of sole for high-heeled shoes since the description of the mark explicitly states that “the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark" (emphasis added). It could also not be said that the mark consisted ‘exclusively’ of a shape in circumstances where the main element of the sign is a specific colour designated by an internationally recognised identification code.

The CJEU consequently ruled that a sign consisting of a colour applied to the sole of a high-heeled shoe, such as that at issue in the main proceedings, does not consist exclusively of a ‘shape’, within the meaning of Article 3(1)(e)(iii).

Whilst position marks have in theory become an accepted and recognised form of trade mark following the implementation of the 2017/1001 Regulation in October 2017, they tend to be difficult to register. The Louboutin decision provides some useful guidance that may assist in assessing the registrability of other position marks.

Additional AG opinion in Louboutin v Van haren Schoenen

In September 2017, we reported Advocate General Szpunar’s opinion in Louboutin v Van Haren Schoenen. Following the June 2017 opinion, the case was reassigned to the Grand Chamber – composed of thirteen judges, rather than the usual three or five for CJEU chambers. A further hearing was held in November 2017 and the Advocate General has issued an additional opinion. Read our update following the November 2017 hearing.

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