Christian Louboutin, Christian Louboutin SAS v Van Haren Schoenen BV C‑163/16

Background: Christian Louboutin applied for the trade mark as pictured, with respect to “footwear other than orthopaedic footwear”

The mark is described as follows: ‘The mark consists of the colour red (Pantone 18‑1663TP) applied to the sole of a shoe as shown (the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark)’.

In 2012, Van Haren, which operates shoe retail outlets in the Netherlands, sold high-heeled women’s shoes with red soles. Then, on 10 April 2013, the registration was amended to cover ‘High-heeled shoes (other than orthopaedic shoes)’.

In 2013 Christian Louboutin issued proceedings on the basis that Van Haren had infringed the mark. The Netherlands judge hearing the dispute issued a default judgment in favour of Christian Louboutin. Van Haren challenged this decision on the basis that the mark was invalid because shape gave substantial value to the product.

The court deferred to the Court of Justice (CJEU) for a preliminary ruling – and the CJEU concluded that trademarks must be interpreted as meaning that a sign consisting of a colour applied to the sole of high heeled shoe does not consist exclusively of a shape.

On that basis the trade mark is valid, and Van Haren infringed the registered trade mark.

Our comment: We are not so sure that this is the end of the road for Louboutin’s red sole mark – but if you have a particular question regarding obtaining trade mark protection for colour marks then please do not hesitate to contact us.