A sign consisting of red colour applied to the sole of a shoe doesn’t consist exclusively of a “shape”, according to the ECJ

By judgement of 12 June (case C-163/16), the EU Court of Justice (ECJ) decided on the request for a preliminary ruling from the Rechtbank Den Haag (District Court, The Hague, Netherlands) in the course of infringement proceedings between Mr Christian Louboutin and Christian Louboutin SAS (together, “Louboutin”) and Van Haren Schoenen BV company (“Van Haren”), concerning the interpretation of Article 3.1 e) iii) of Directive 2008/95/EC.

The sequence of events began in 2010 when, based on the application filed by Mr Louboutin, the Benelux Office for Intellectual Property granted the registration of trademark no. 0874489 (reproduced and described below), for goods in Class 25, in particular “Footwear (other than orthopaedic footwear)”, later amended to “High-heeled shoes (other than orthopaedic shoes.

“the trademark consists of 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 trademark but is intended to show the positioning of the mark)”

In 2013 Christian Louboutin filed an action before the Rechtbank Den Haag for infringement of the mark at issue against the Van Haren company, because the latter sold high-heeled women’s shoes with red soles. That court delivered a default judgement upholding in part the claims of the actor.

Van Haren challenged that judgement, claiming that the mark at issue was a two-dimensional figurative mark consisting of a red-coloured surface, and therefore invalid because of consisting solely of a shape which gives substantial value to the goods, according to Article 3.1 e) iii) of Directive 2008/95/CE.

The referring court considered that, with regard to the graphic representation and the description of the mark at issue, the colour red inextricably linked to the shoe’s sole, and therefore the mark cannot be regarded merely as a two-dimensional figurative mark. That assessment is confirmed by the specification in the description of the mark, which states that “the contour of the shoe does not form part of the mark”. Furthermore, the Rechtbank Den Haag also considered that a significant portion of the consumers of high-heeled shoes, in the Benelux States, was able to identify Christian Louboutin shoes as goods originating from that producer and was able to distinguish them from women’s high-heeled shoes from other undertakings, admitting that the mark at issue was perceived as a trademark. Moreover, the referring court considered that the red sole gives substantial value to the shoes marked by Christian Louboutin, since that colour forms part of the appearance of those shoes, an aspect that plays an important role in a consumer’s decision to purchase them.

Lastly, the court stated that, since the mark at issue consists of a colour which is applied to the sole of a shoe, and corresponds, as a consequence, to an element of the product, the question arises as to whether the exception set out in Article 3, paragraph 1, letter e), iii) of Directive 2008/95 applies to that mark.

And so the following question to the Court of Justice for a preliminary ruling: if the notion of “shape”, within the meaning of that provision, is limited solely to three-dimensional properties of a product, such as its contours, measurements and volume, or whether that concept also covers other properties (non-three-dimensional) of the goods, such as colour.  The Rechtbank Den Haag asks, in essence, whether Article 3 paragraph 1 letter e) iii) of Directive 2008/95 must be interpreted as meaning that a sign consisting of a colour applied to the sole of a high-heeled shoe consists exclusively of a “shape”, within the meaning of that provision.

First of all the ECJ held that, given that Directive 2008/95 provides no definition of the concept of “shape”, the meaning and the scope of that concept must be determined by considering its usual meaning in everyday language, taking into account the context in which it occurs and the purposes of the rules of which it is part. In the case at issue, in the context of trademark law the concept of “shape” usually designates a set of lines or contours that outline the product. Furthermore, it doesn’t follow from Directive 2008/95, the case-law of the court, or the usual meaning of that concept, that a colour per se, without an outline, may constitute a shape. Nevertheless, in the case at issue, the question arises as to whether the fact that a particular colour is applied to a specific part of the product results in the sign at issue consisting of a shape.

The ECJ observed that “while it is true that the shape of the product or of a part of the product plays a role in creating an outline for the colour, it cannot, however, 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 sought solely to protect the application of a colour to a specific part of that product”.

In this case, the contour of the shoe does not form part of the mark and is intended purely to show the positioning of the red colour covered by the registration, while the mark does not relate to a specific shape, in fact the description of that mark explicitly states that the contour of the shoe does not form part of the mark. In any event, the ECJ observed that a sign such as that at issue cannot be regarded as consisting “exclusively” of a shape, considering that the main element of that sign is a specific colour designated by an internationally recognised identification code.

In conclusion, the court ruled that Article 3.1 e) iii) of Directive 2008/95/CE “must be interpreted as meaning 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 that provision”.