Selling their soles
How an Advocate-General's Opinion might spell bad news for Christian Louboutin and other owners of non-traditional trade marks
An opinion delivered by Advocate-General Maciej Szpunar seems likely to lead the Court of Justice of the European Union (CJEU) to rule that luxury shoe maker Christian Louboutin is not entitled to EU registered trade mark protection for the combination of the colour red with the shape of the soles of its shoes.
AG Szpunar ruled that it was necessary to consider the colour in relation to the shape of the shoe sole and he went on to expressed his serious misgivings as to whether the colour red can be an identifier of a trademark (and thus as a distinctive badge of origin linking to the proprietor) when the colour is used in context.
Commentators have suggested that the AG's reasoning follows the line adopted by the CJEU in the earlier Yoshida case and that the court must make its own factual assessment of the nature of a trade mark, and not necessarily that expressed by the mark's owner. It has also been suggested that AG Szpunar's conclusion that only the intrinsic value of the shape of the soles themselves is relevant for the application of the 'substantial value' exclusion (and not the owner's perception) is a logical progression from the established European doctrine that shape marks cannot benefit from acquired distinctiveness.
The AG distinguished the function of the colour red on the soles being something that "added value" to the shoes, from something operating as a badge of origin, which a trade mark must do.
The CJEU has a history of making "factual assessments" which do not favour non-traditional marks such as Louboutin's red soles, and if the Court chooses to adopt AG Szpunar's opinion, which appears likely, this could represent a further "nail in the coffin" of such marks in the European arena, as well as a major blow to Louboutin if high-heels with bright red soles then become ubiquitous at all levels of the market.
However, the AG's opinion is just that - an opinion - and the learned judges of the CJEU may reach a different conclusion. Until then, brand owners - particularly those with non-traditional marks involving shapes, colours etc - and their advisers can only wait eagerly for the outcome.
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