On April 10, 2013, amendments were made to the application for the disputed trademark by limiting the scope of protection granted by this trademark to “high-heeled shoes (excluding orthopedic footwear).”
In light of this situation, on May 27, 2013, a lawsuit for infringement of the aforementioned trademark was filed against Van Haren. On July 17, 2013, the court issued a default judgment, partially granting the claim of Christian Louboutin. In response, the Dutch company requested the invalidation of the disputed trademark, arguing that European law essentially prohibits the protection of shapes if it significantly increases the value of the product.
The case was handled by the district court in The Hague, which ultimately suspended the proceedings and referred a preliminary question to the Court of Justice of the European Union: “Is the concept of ‘shape’ within the meaning of Article 3(1)(e)(iii) of Directive [2008/95] (in the German, English, and French language versions of this directive, respectively: Form, shape, and forme) limited to the three-dimensional characteristics of the goods, such as the (three-dimensionally depicted) contours, size, and volume of the goods, or does this provision also apply to other (non-three-dimensional) characteristics of the goods, such as color?”
In February 2018, it seemed that Christian Louboutin would lose the dispute, due to the Advocate General of the CJEU, who in his opinion indicated that the refusal to register a combination of color and shape as a trademark is permissible.
However, on 12 June 2018, the Court of Justice of the European Union issued a judgment (C 163/16) stating that, in the absence of any definition of the term “shape” in Directive 2008/95, the meaning and scope of this term must – in accordance with the established case law of the Court – be determined in accordance with its ordinary meaning in everyday language, while also taking into account the context in which the term is used, as well as the objectives of the regulation of which it is part (see, by analogy, the judgment of 3 September 2014, Deckmyn and Vrijheidsfonds, C 201/13, EU:C:2014:2132, paragraph 19). The Court emphasized that while it is true that the shape of a product or part of a product plays a role in distinguishing a colour, it cannot be stated that the mark is created by that shape when the trademark application aims to protect not so much the shape itself, but only the application of a given colour in a specific location on the product in question. As a result, in answering the preliminary question, the Court stated that “Article 3(1)(e)(iii) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trademarks must be interpreted as meaning that a mark 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 ‘shape’ within the meaning of that provision.”
What does this judgment mean? It means that Christian Louboutin can and has registered his distinctive red soles as a trademark. However, before the dispute is officially concluded, the case must return to the district court in The Hague, which in this case must take into account the above judgment of the Court. This outcome should undoubtedly be seen as a success for Louboutin, who can now effectively oppose his imitators.
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