Louboutin shoes for women are known for their outer sole being always red. Louboutin registered that trade mark for ‘footwear’ and described it as consisting ‘of the colour red (Pantone 18 1663TP) applied to the sole of a shoe as shown (the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark)’.
In the course of a trademark litigation for infringement ot this mark, the defendant raised the invalidity argument of signs that consist exclusively of a shape that gives substantial value to the goods.
In the judgment C-163/16 dated 12. 6. 2018, the ECJ took the view that, since the trade mark directive provides no definition of the concept of ‘shape’, the meaning of that concept must be determined by considering its usual meaning in everyday language. The Court pointed out that it does not follow from the usual meaning of that concept that a colour per se, without an outline, may constitute a ‘shape’.
Furthermore, while it is true that the shape of the product or of a part of the product plays a role in creating an outline for the colour, it cannot, however, be held that a sign consists of that shape in the case where the registration of the mark did not seek to protect that shape but sought solely to protect the application of a colour to a specific part of that product.
In the present instance, the mark does not relate to a specific shape of sole for high-heeled shoes since the description of that mark explicitly states that the contour of the shoe does not form part of the mark and is intended purely to show the positioning of the red colour covered by the registration.
The Court also holds that a sign, such as that at issue, cannot, in any event, be regarded as consisting ‘exclusively’ of a shape, where the main element of that sign is a specific colour designated by an internationally recognised identification code.
A mark consisting of a colour applied to the sole of a shoe consequently is not covered by the prohibition of the registration of shapes. Such a mark does not consist ‘exclusively of the shape’, within the meaning of the trade mark directive.