From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Wednesday, 9 March 2016

BREAKING - Louboutin case referred to CJEU: can a colour be a shape?

The shape colour red
Via a precious Katfriend who wishes to remain anonymous but nonetheless tweets as @TreatyNotifier comes the news that a new reference for a preliminary ruling in the area of trade marks has just been made to the Court of Justice of the European Union (CJEU). 

This is in the context of long-running litigation over the (in)famous Louboutin red soles.

The question for the CJEU to address is whether the notion of 'shape' within Article 3(1)(e)(iii) of Directive 2008/95 is limited to three-dimensional elements of a product or can also include two-dimensional ones like, for instance, a colour.

Article 3 sets the absolute grounds for refusal of registration. Article 3(1)(iii) prevents registration of signs which consist exclusively of the 'shape' which gives substantial value to the goods.

This Kat understands that not all language versions of the directive speak of 'shape'. Indeed, the French version refers to 'forme', the German version speaks of 'form', and the Italian version speaks of 'forma'. In Italian a 'forma' is not necessarily three-dimensional, but can also be two-dimensional, and the same is true in French and German as well.

So is the English (and possibly Dutch?) version of the directive unduly restrictive?

As reported by IE Forum, this is question (in Dutch) that the Rechtbank den Haag has just referred to everybody's favourite court:

"Is het begrip vorm in de zin van artikel 3 lid 1e onder iii van Richtlijn 2008/95/EG (in de Duitse, Engelse en Franse versie van de Merkenrichtlijn respectievelijk Form, shape en forme) beperkt tot de driedimensionale eigenschappen van de waar zoals de/het (‘in drie dimensies uit te drukken') contouren, afmetingen en volume daarvan, dan wel ziet deze bepaling mede op andere (niet-driedimensionale,) eigenschappen van de waar zoals kleur?"

Stay tuned because as soon as further information becomes available, this blog will duly report.


Anonymous said...

Although I am really curious to see what the CJEU's position will be on this issue, it makes me wonder what the practical result of it will be since the new directive 2015/2436, in article 4 e (iii), refers to "shape or ANY OTHER CHARACTERISTIC" of the mark as possible absolute ground of refusal and, therefore, the notion of a color seems to fit in such provision.

Anonymous said...

Yep, I agree with the first comment. The new provision will encompass colors as well. To avoid any confusion, I think it's highly likely that the court here comes to the same conclusion in regards to (old)Article 3(1)(iii)....

Anonymous said...

The article seems to infer that there may be some difference between the various languages in terms of 2D v 3D, but is there any particular reason why one of the language variants, shape/vorm/forma/forme/Form, etc, should be (more) limited to 3D? For example, a triangle/driehoek/Dreieck/triangolo, etc seems to be a 2D example in each language.

Anonymous said...

Not sure what this article is getting at -the Court has dealt with "shape" marks or "formes" for some time now on the basis of different language versions. The case law on different language versions of EU laws which appear to differ is also settled -there has to be a harmonious interpretation. It would be absurd to suggest that the English version refers only to three dimensional marks but the others do not.This would mean one rule for CTMs when applied for in English and another for other language versions.

Guido Noto La Diega said...

I think that the English 'shape' encompasses also two-dimensional marks, however, if I have understood the reference (I'm not good at Dutch), the Rechtbank den Haag seems to suggest that 'vorm' had better referred only to three-dimensional marks

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':