Here's some exciting breaking news from the Benelux, courtesy of Katfriend Laurens Kamp (Simmons & Simmons LLP, Amsterdam). Writes Laurens:
here) invalid.This Kat suspects that we have not seen the end of the famous red sole, regardless of whether it is classified as a shape mark, a colour mark, a position mark or anything else: there's simply too much money at stake. Merpel notes that this ruling and that of the OHIM Second Board of Appeal are not necessarily contradictory, even if they reach opposite conclusions: the degree of flexibility open to courts in Europe is vast, despite two decades of rampant harmonisation. The Community trade mark system is autonomous, as OHIM, the General Court and the Court of Justice never tire of telling us, and consumers at national or regional level, with different perspective, customs and linguistic backgrounds, are quite capable of seeing all manner of marks in different ways as soon as a border has been crossed.
The court first established that the trade mark registration had to be classified as a shape mark and not as a colour mark. Having established this, the court then examined whether one of the exclusions for registrability of shape marks applied. Based on the documents presented by the defendants, it found that the red sole gave the shoes their substantial value, and that the trade mark had to be declared invalid as a consequence.
Then the court then stated obiter that, since the trade mark was a shape mark, it had to be analysed whether the shape significantly departed from the norm of the sector so that it could serve as an indication of origin of the goods in question. Van Dalen Footwear had however shown many examples of shoes with a red sole, but which did not originate from Louboutin. On this basis, the court concluded that the red sole was a common shape on the market and did not significantly depart from the norm of the sector. It therefore lacked distinctive character.
The court of Brussels hereby explicitly departed from an earlier decision of OHIM’s Second Board of Appeal, which had classified the Louboutin mark as fanciful and unexpected. According to the Brussels court, the defendants had however established that the red sole was at least common.
You can check out the original judgment here, or download it here.
Katpats also go to Jan-Diederik Lindemans (Crowell & Moring in Brussels) and to Laurens' colleague and fellow blogger Hidde Koenraad.
Louboutin in the USA here, here, here and here
Louboutin in France here