Can you own red soles?

News | 12.09.17

Intellectual property law
There is arguably an increasing need for companies to distinguish products and services from their competitors. This need has led to an innovation in trademark elements sought registered. Is it sensible to permit the trademarking of particular colours, effectively barring competitors from using them?

Can you own red soles?

Trademarks have traditionally consisted of words, phrases, symbols or designs identifying and distinguishing the owner's source of the goods or services from those of others. But, as a result of the constant development of products and services in modern society, other elements, such as sounds, motions and colours have been used and accepted as trademarks. 

The law concerning such contemporary non-traditional trademarks is still evolving, and there are interesting cases coming up within the next months. Rulings this far indicate that colour trademarks are not the easiest accessible weapon in companies' trademark arsenal. 

Louboutin vs Van Haren
The ongoing colour trademark case between the famous French luxury shoe brand Christian Louboutin and Van Haren Shoenen is a good example of this. Most fashion conscious women will recognise the high heeled Louboutin shoes by the red soles. The case revolves around the validity of Louboutin's Benelux trademark registration.

The red sole of these shoes is registered as a trademark consisting of the colour red (Pantone 18 1663TP) applied to the sole of a high heeled shoe.

 Christian Louboutain's trademark registration

Christian Louboutain's trademark registration. Source: Norwegian Industrial Property Office

Louboutin brought a trademark infringement action as a result of Van Haren's offering of similar high heeled woman's shoes with red soles in the Netherlands. Van Haren's line of defence was among other things that Louboutin's trademark was invalid.

In particular, Van Haren claimed that Louboutin's mark consisted of the colour red which, when applied to the soles of the shoes, constitutes the shape of the shoes.  This feature, or "shape", is what gives the shoe its substantial value. According to Article 3(1)(e)(iii) of EU Directive 2008/95, a sign that consists exclusively of the shape that gives substantial value to the goods shall be declared invalid. The reasoning behind this rule is to avoid trademark registrations that limit the ability of other companies to bring competing products to the market.

In other words, the question is whether non three-dimensional properties such as a colour can be considered as part of the "shape", or if the term "shape" should be limited to three-dimensional properties of the goods (such as contours, measurements and volume).

The District Court of The Hague requested the European Court of Justice's (ECJ) opinion in this matter. The Advocate General issued his advisory opinion to ECJ on 22 June 2017. The opinion concludes that the colour of the relevant trademark is an integrated part of the shape and that the trademark should be held invalid.

It is now up to the ECJ to decide on the matter, after which will be remanded to the District Court of the Hague to conclude on the trademark matter between Louboutin and Van Haren.

Louboutin's exclusive right to use red soles is not the only right at stake if ECJ sides with the Advocate General's opinion. It would most likely cause problems for other trademarks combining colours and shapes. Hence, there will be many interested readers of the decisions to come.

A simple solution?
We believe that if Louboutin had registered only the specific red colour as a trademark in class 25 (footwear) and limited the protection to the soles of women's shoes, the trademark registration could avoid the limitation in Article 3(1)(e)(iii) Directive 2008/95, as it would not include a reference to any particular shape.

Such solution provides the additional advantage of broader protection. Instead of limiting the exclusive right to the specific shoe depicted in the current trademark registration, our proposed solution would theoretically include a wider range of red soles.