The red sole on the base of Louboutin shoes has been the focus of both media and legal attention for many years.
There has been extensive litigation in the USA about the red sole (see here). In Europe, the issues have focused on Louboutin's various European trade marks for the red sole in relation to "Footwear (other than orthopaedic footwear)" in Benelux and "High-heeled shoes (except orthopaedic footwear)" at EUIPO.
The mark's description refers to Pantone 18.1663TP and notes that the outline of the shoe is "not part of the trademark but serves to show the positioning".
The trade mark is a sort of hybrid shape and colour mark where the claimed mark is the colour red on the sole of a heeled shoe (this is sometimes known as a position mark).
The registration of this mark became of particular strategic importance for Louboutin when Yves Saint Laurent brought out a range of red shoes where the sole was also red. As far as Louboutin was concerned this was clear infringement of its trade mark and it issued proceedings for trade mark infringement in the US. The US appellate court was less convinced that the red sole could always act as a “badge of origin” and limited the scope of the mark to situations where the upper shoe was a contrasting colour to the sole. This meant that YSL was able to keep selling red shoes with red soles in the US but not red soled shoes in other colours.
Similar issues arose when Louboutin sought to rely on its “red sole” marks in Europe. There is a recent decision from the CJEU which concerns Louboutin’s 2010 Benelux trade mark for the grey outline of a high heeled shoe with a sole in the colour red. This mark is registered in relation to “high-heeled shoes” in class 25. The Benelux trade mark attempts to disclaim the contour of the shoe which it says “is not part of the trade mark but is intended to show the positioning of the mark.”
Louboutin sought to rely on the mark to stop Van Haren, a Dutch shoe retail outlet, from selling shoes with red soles. The inevitable challenge to the trade mark’s validity followed. The main question was whether the Benelux mark is a shape mark or a colour mark. If it was a shape mark, the additional requirements for shape marks such as “substantial value” apply to the mark and could have meant that it is invalid. The relevant Advocate General was asked twice whether or not he thought that the mark is for a shape or a position. On both occasions he stated that, in his opinion, it is a shape. However, the the CJEU ultimately reached the conclusion that the mark was not a shape mark (an unusual departure by the CJEU from an Advocate General’s opinion and a relief for shoe aficionados). The case was referred back to the Belgium court for a final decision.
*Benelux is the name given to the joint registry for Belgium, Netherlands and Luxembourg.
To find out more contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com