Will Louboutin get sole right to its iconic red sole?
French designer Christian Louboutin was recently backed up by The Court of Justice of the European Union (CJEU) in a in a fight against the Dutch shoe chain Van Haren over its iconic red-soled high-heeled shoes.
The dispute began in 2013, when Louboutin filed a lawsuit with the District Court of The Hague against Van Haren to stop it from selling its own brand with red soles. Van Haren claimed that Louboutin’s trademark was invalid based on that the shape of a product that lacks distinctiveness, such as a sole, is not subject to trademark protection. Van Haren argued that applying red to a shoe was regulated by the same law and that Louboutin’s trademark should be cancelled.
The court held that since a significant proportion of consumers of women’s high-heeled shoes identified shoes with red soles as originating from Christian Louboutin, Van Haren’s red-soled shoes caused confusion. A preliminary injunction was awarded Louboutin and Van Haren was ordered to cease its manufacturing and selling of shoes with red soles, and to pay Louboutin’s court costs and legal fees. Van Haren appealed against the decision and the case was referred to the CJEU.
A position mark consists of the specific way in which the mark is placed or affixed to the product. In this case, the description of Louboutin’s mark explicitly states that “The trademark consists of the colour red (Pantone 18.1663TP) applied to the sole of a shoe as shown (the outline of the shoe is therefore not part of the trademark but serves to show the positioning of the trademark).”
Citing the description, the CJEU determined that the position of the colour red on the sole is not considered as a part of the shape of the shoe and therefore, Louboutin’s trademark is valid.
The case is now back at the District Court of The Hague who is to make a final decision about the validity of Louboutin’s trademark. It is believed that the ruling will be based on CJEU’s decision and that the victory will give Louboutin the sole (pun intended) right to red-soled high-heeled shoes in the European Union.
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