In 1992 a fashion designer borrowed a pot of red nail varnish from his assistant, and in painting the sole of a stiletto heel in the scarlet colour, created a brand that is to many recognisable throughout the world as the work of Christian Louboutin.
Earlier this summer, the European Court of Justice ruled that Louboutin’s red soles can be protected as a trademark.
The trademark dispute between Louboutin and a copycat designer, Van Haren, which began in 2012, had battled its way up to the highest court in the EU on more than one occasion.
Most recently the ECJ was tasked with the question: is the notion of ‘shape’ within the meaning of the EU trademark directive limited to three-dimensional properties of the goods, such as their measurements and volume, or does it include other properties of the goods, such as their colour?
The question was significant as previously, the accepted position was that under EU trademark law, a shape alone cannot be registered as a trademark.
The new EU trademark directive (which came into force in March 2016 and must be transposed into national law by all EU Member States by 15 January 2019) prohibits, on absolute grounds, the registration of a mark which consists exclusively of a shape which results from the nature of the goods (i.e. the sole of a shoe) or adds substantial value to the goods (i.e. the goodwill associated with the red sole).
Over the past few years, a spate of well-known brands including KitKat, Lego, Coco-Cola and the eponymous brand in question, have faced difficulties when trying to protect a shape that is synonymous with that brand.
The ECJ, however, noting that Louboutin was not seeking to protect the shape of the shoe, but protect the application of a colour to a specific part of it, ruled in their favour.
It confirmed that as the mark does not relate to the specific shape of the sole for high heeled shoes, but applies to the positioning of the red colour on the sole of any high heeled shoe, the prohibition relating to shapes does not apply.
The ruling is unusual as the recommendation of the advocate general given earlier this year was not followed.
The case will now be referred back to the District Court of the Netherlands, where the dispute originated, before it is concluded, but will be welcome news for those who rely on colours or patterns placed on products to denote origin.