The Louboutin example

One of the most important trademark cases in recent years is the dispute between Christian Louboutin and Van Haren Schoenen BV, a Dutch footwear company, over Louboutin's red sole trademark. The case made its way to the European Union Intellectual Property Office (EUIPO) and ultimately to the European Court of Justice (ECJ), where it was decided in favor of Louboutin.

The dispute began in 2012, when Van Haren released a line of high-heeled shoes that featured red soles. Louboutin, who is known for his signature red soles, sued Van Haren for trademark infringement. Louboutin's trademark, which was registered in 2010, specifically covers "the colour red (Pantone 18-1663TP) applied to the sole of a shoe."

Van Haren argued that the trademark was invalid, citing a provision in EU law that prohibits trademarks from being registered if they consist "exclusively of the shape which gives substantial value to the goods." Van Haren claimed that the red sole was a shape feature, rather than a color feature, and that it gave substantial value to Louboutin's shoes.

The case made its way to the EUIPO, which initially sided with Van Haren, ruling that Louboutin's trademark was invalid. However, Louboutin appealed the decision and the case was eventually referred to the ECJ.

In its 2018 ruling, the ECJ upheld Louboutin's trademark, stating that it did not consist exclusively of a shape and was therefore valid. The court explained that a trademark consisting of a color applied to a specific part of a product, such as the sole of a shoe, does not consist exclusively of a shape if the shape of the product is not essential to the use of the product. In other words, the red sole was not essential to the use of the shoe, and therefore did not give it substantial value.

The ruling was a significant victory for Louboutin and for the fashion industry as a whole. It reaffirmed the importance of protecting unique design elements, such as color, and recognized the value of non-traditional trademarks. It also clarified the distinction between color trademarks and shape trademarks, which had previously been a source of confusion and controversy.

The Louboutin case serves as a reminder of the importance of trademark protection for businesses, particularly those in the fashion and luxury goods industries. Trademarks are a vital tool for protecting brand identity and reputation.