By Yaiza Bascón Castro

The Court of Justice of the European Union has given their final verdict on a case which was first presented to the district courts of “La Haya” concerning Christian Louboutin and Christian Louboutin SAS / Van Haren Schoenen BV.

Van Haren, a wholesale footwear giant/distributor from the Netherlands, sold shoes with the iconic red sole for women in 2012. Mr Louboutin of Louboutin SAS initiated/filed a violation infringement to their mark 0874489, which is represented in the following picture:  

Following this, Van Haren argued against the filed infringement stating their mark was a 2 dimiensional figurative mark, constructed on a red base.

With this in mind, article 3.1.e.iii) of the Board 2008/95/CE of the European Parliament and Court, outlines various cases of invalidity of a TM, in which relative to marks constituted only by the shape which adds substantial value to the product.

Having looked at the facts, The District Court of “La Haya” decided to suspend the procedure and asked the European Court of Justice to clarify whether the concept of “shape” was limited to 3D characteristics of a product (namely the contour, the dimensions and the volume), or if reference can also be made to other characteristics which aren’t three dimensional, like the colour.

In the sentencing of caseC-163/16, the Court states that due to there not being a clear definition for “shape” in The Board 2008/95, its meaning should be taken from the current meaning of the word in every day speech. Therefore, the concept of “shape” in the context of trademark law defines “shape” as a group of lines or contours which define the product in a set space.

To this end, the Court also identifies that a TM, like the contested mark in the above litigation, is exclusively constituted by the shape, when its principal objective is the colour, distinguished using an internationally recognized identification code (Pantone 18-1663TP).

In short, the contested mark does not consist of a specific sole for high heeled shoes, given that in description of the mark it is indicated that “the shoe’s outline is not part of the mark, it only serves to put in prominence the position of the mark. Yaiza Bascón Castro

In conclusion, the court clarifies that a mark consisting of a colour which is applied to the sole of a  high heeled women’s shoe, is not constituted exclusively by the “shape”, in the same way which is identified in the article 3.1.e.iii) of the Board 2008/95.