• Skip to main content
  • Skip to primary sidebar
  • Skip to footer
+49 (0) 69 / 606 278 – 0
[email protected]
Contact form
Patent- & Rechtsanwaltskanzlei

Patent- & Rechtsanwaltskanzlei

  • Deutsch

+49 (0) 69 / 606 278 – 0

  • Facebook
  • Twitter
  • Instagram
  • LinkedIn
  • xing
  • Email
MENUMENU
  • Services
    • Advice On Protective IP Rights
    • Patent Application /TM Registration
    • Enforcement Of IP Rights
    • Defence Against IP Rights Enforcement
    • Costs
  • Company
    • Fields of Law
      • Patent Law
      • Utility Model Law
      • Employees‘ Inventions
      • Trademark Law
      • Design Law
      • Trademark and Product Piracy
      • Expert Opinions
    • Our Law Firm
      • Dr. Karl-Hermann Meyer-Dulheuer
      • Dr. Tim Meyer-Dulheuer
      • Dr. Klaus Zimmermann
      • Zhichao Ying
      • Eva Maria Amoah
    • Commitment
  • Contact
    • Where To Find Us
    • Write us!
    • Request call back
  • Blog

Louboutin victorious in the battle over the famous red sole

12. June 2018

Louboutin won today before the ECJ in the long-standing dispute over his famous high heels and the striking red shoe sole. The ruling is particularly important for trademark protection of combinations of shape and color, which is especially important for well-known brand names.

The ECJ answered the question referred by the Dutch court: Does the term “shape” in the EU Trademark Directive (Directive 2008/95/EC) also include properties which do not concern shape in the sense of three-dimensional structure, but, for example, the positioning of a certain colour in the trademark?

The background is the long-running legal dispute against Europe’s largest shoe retailer Deichmann over the use of red shoe soles. Van Haaren, a subsidiary of Deichmann, marketed a women’s shoe collection in 2012 called “5th Avenue – by Halle Berry”, which included black pumps with red soles. Louboutin was able to force a sales stop (we reported), but the dispute was not over. The Dutch court, before which Louboutin had brought an action against Vant Haaren, asked the ECJ for a precise interpretation of the term “form”.

ECJ sees shape as protection for position of colour

Louboutin red soleThe ECJ clearly affirms this question in the affirmative. “A trade mark consisting of a colour applied to the sole of a shoe is not covered by the prohibition on registration of shapes. Such a mark does not consist “exclusively of the shape” within the meaning of the Trade Mark Directive,” the European Court clarifies.

It does not follow from the usual meaning of the word “shape” that a colour per se may constitute a shape without spatial limitation, the Court held. However, the description of the mark expressly states that the contour of the shoe is not covered by the mark but serves only to show the position of the red colour covered by the registration. Therefore, the mark does not refer to a specific shape of the sole of high-heeled shoes, but the shape is intended to protect the application of a colour to a specific part of that product.

The Court thus confirmed at the same time that the fact that a colour is applied to a product, which thus in practice constitutes a spatial limitation of the colour, does not mean that the shape becomes part of the trade mark.

Furthermore, the Court held that a sign such as that at issue in the main proceedings cannot be regarded as exclusively consisting of the shape if, as in the present case, its principal subject-matter is a colour determined according to an internationally recognised identification code.

Today’s Judgment contradicts the Advocate General’s Opinion

The court thus contradicted the opinion of his Advocate General (we reported: “Louboutins: Red sole is a Hallmark – but not a Trademark?! ). EU Advocate General Szpunar pleaded in 2017 and again in February 2018 for inadmissible trademark protection.
In his opinion, it could not be sufficient for trademark protection if colour and shape constitute the essential value of the product. The distinctiveness of colour marks is low, since consumers can hardly make a direct comparison with colour tones. That is even more so in the case of positional marks.

In fact, according to previous case-law, it is not the classification of the mark as a figurative, three-dimensional or positional mark which is relevant, but only the question whether it corresponds to the appearance of the product concerned. For the purposes of that provision, the term shape, which confers essential value on the product, concerns only the inherent value of the shape and does not allow the reputation of the mark to be taken into account.

 

Would you also like to protect your brand or trademark?

Then please do not hesitate to contact us. Our patent attorneys and attorneys at law are experienced and highly qualified in all areas of intellectual property law, both nationally and internationally.

Request your call-back without any obligations!

CAT-call_en

 

Sources:

ECJ C:2018:423 Louboutin vs. Van Haren Schoenen

Picture:

photosbylanty.com (Photos by Lanty) / Flickr.com / CC BY 2.0 (revised)

  • share  
  • share 
  • share 
  • tweet  
  • share 

Category iconInternational Intellectual Property,  Trademark Law Tag iconLouboutin,  brand,  colour mark,  Union Trade Mark,  3D shape,  colour combination,  positional mark,  Form,  ECJ

Reader Interactions

Leave a Reply Cancel reply

Your email address will not be published. Required fields are marked *

Primary Sidebar

More articles about: International Intellectual Property

All articles

Blog Menu

  • Design Law
  • Healthcare & Lifesciences
  • International Intellectual Property
  • Licenses
  • News from our law firm
  • Overall
  • Patent Law
  • Product- and Trademark piracy
  • Trademark Law
This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

Recent Posts

  • Case law product similarity: consumer attention 13. April 2021
  • OLG Düsseldorf: No compensation for damages of gratuitous licensing 9. April 2021
  • Alkemie vs. Alkmene: word/figurative mark vs. earlier word mark 9. April 2021
  • Hitachi patent partially invalid in GER: code distribution for mobile communication 8. April 2021

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Das könnte Sie auch interessieren:

13. April 2021
Case law product similarity: consumer attention

Case law product similarity: consumer attention

9. April 2021
OLG Düsseldorf: No compensation for damages of gratuitous licensing

OLG Düsseldorf: No compensation for damages of gratuitous licensing

9. April 2021
Alkemie vs. Alkmene: word/figurative mark vs. earlier word mark

Alkemie vs. Alkmene: word/figurative mark vs. earlier word mark

6. April 2021
Google vs. Oracle: Java API code falls under fair use!

Google vs. Oracle: Java API code falls under fair use!

26. March 2021
Colour mark: systematic arrangement of colours decisive

Colour mark: systematic arrangement of colours decisive

25. March 2021
Cyprus unsuccessful against mark Halloumi from Greece

Cyprus unsuccessful against mark Halloumi from Greece

Footer

Contact

Franklinstr. 61-63
D-60486 Frankfurt am Main
Germany

+49 (0) 69 / 606 278 – 0
+49 (0) 69 / 606 278 – 199
[email protected]

Customer Reviews

Meyer-Dulheuer MD Legal Patentanwälte PartG mbB Patentrecht, Markenrecht, Eigentum hat 4,78 von 5 Sternen 23 Bewertungen auf ProvenExpert.com

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Law Firm

  • Request non-binding call back
  • Info secure emails
  • Company
  • Our Law Firm
  • ISO Certificate
  • Privacy Policy
  • Data handling for clients
  • Imprint

Follow Us

  • Facebook
  • Twitter
  • Google+
  • LinkedIn
  • xing
  • Email

Newsletter Signup

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

© Patent- & Rechtsanwaltskanzlei Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

Kontaktformular

 

Rufen Sie uns an, schicken Sie uns eine Mail oder füllen Sie das Kontaktformular aus.

+49 (0) 69 / 606 278 – 0
[email protected]

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

Contact Form

 

Give us a call, send us an email or fill out the contact form.

+49 (0) 69 / 606 278 – 0
[email protected]

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form