EU court backs Louboutin and 'hybrid' trade marks

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EU court backs Louboutin and 'hybrid' trade marks

Fashion brands will welcome a new ruling by the EU's highest court in a case involving luxury shoe manufacturer Louboutin, a specialist in trade mark law has said.12 Jun 2018

Florian Traub of Pinsent Masons, the law firm behind Out-Law.com, said the judgment of the Court of Justice of the EU (CJEU) would also be welcomed by all businesses who wish to use non-traditional marks, such as colour and position marks, to give additional protection to their products.

Louboutin owns a trade mark in the Benelux region which gives it monopoly rights over the use of a particular shade of red applied to high-heeled shoe soles. However, Van Haren Schoenen, a shoe retailer in the Netherlands, challenged whether the mark should have been registered.

The retailer claimed that Louboutin's mark represented a shape consisting of a red coloured surface. Its case was that the mark was registered in breach of a part of EU trade mark law that prohibits the registration of marks where they are simply signs which "consist exclusively of ... the shape which gives substantial value to the goods".

However, the CJEU, considering the case referred to it by the district court of The Hague, said Louboutin's colour mark does not relate to a specific shape of soles for high-heeled shoes. Central to that finding was how Louboutin had described the scope of its mark.

According to the CJEU, Louboutin "explicitly states that the contour of the shoe does not form part of the mark" and the image it used to indicate its mark – which shoes a red coloured sole on a high-heeled shoe – "is intended purely to show the positioning of the red colour covered by the registration".

The court also rejected the idea that Louboutin's mark could be regarded as consisting exclusively of a shape. It determined that "the main element" of Louboutin's mark "is a specific colour designated by an internationally recognised identification code".

"This ruling will come as a relief for Louboutin and other trade mark owners in the fashion industry and beyond which will now be able to use ‘hybrid marks’ more strategically for trade mark protection," said Traub.

"The judgment has only 28 paragraphs, which is remarkable in itself. The court may be criticised for taking a too formalistic view on the wording of the Trade Marks Directive, basically disregarding the fact that ‘hybrid marks’ somewhat sit on the fence between, in this case, shape marks and colour-per se marks," he said.

In reaching its judgment, the CJEU disregarded advice given to it by advocate general Maciej Szpunar in a non-binding opinion issued on the case earlier this year.