Louboutins red sole: a valid trademark after all?
Black pumps with a red sole are a very well-known phenomenon in the world of high heels: they originate from the Frenchman Christian Louboutin. But successful trademarks are copied, and so, i.a. Van Haren also decided to release pumps with a red sole. Louboutin, the owner of a Benelux trade mark for his red sole since 2009, went to the court of The Hague. This judge then asked the Court of Justice whether the red sole could be a trademark, or whether it was a shape that gives ‘substantial value’ to the product – and would therefore be excluded from protection under trademark law.
On the 12th of June 2018 the European Court of Justice judged that the red sole does not entail a shape and that accordingly, it can be a trademark. In principle, this is good news.
However, in the meantime, the rules of the trademark game have changed. Following the entry into force of the new Trademark Directive and the EU Trademark Regulation, the grounds of exclusion were widened: not only the ‘shape’ but also ‘another characteristic’ that gives substantial value to the goods, cannot be a trademark.
Some now say that even though the red sole is not a shape, it most certainly is another characteristic that gives substantial value to the good and that protection should therefore be denied. However, the trademark registration dates from before the new rules. What to do?
Neither the directive, nor the regulation provides provisions that decide what regime applies to trademarks that were registered before the new legislation. Therefore, the question arises whether the old legislation applies to the trademark (following which the sole is protected) or whether the new legislation should be applied to the red sole trademark – which could result in the declaration of invalidity of the trademark. This question about the applicable legislation needs to be answered. Back to the Court of Justice?
Moïra Truijens