BREAKING: CJEU rules that Louboutin red sole mark does NOT fall within absolute ground for refusal

The Louboutin mark
Is the Louboutin red sole mark a valid trade mark or not? At last - the moment all IP aficionados were waiting for has come! 

The Court of Justice of the European Union (CJEU) has just issued its much-awaited judgment in Louboutin C-163/16, ruling that a mark consisting of a colour applied to the sole of a shoe is NOT covered by the prohibition of the registration of shapesSuch a mark does not consist ‘exclusively of the shape’.

The question that the Rechtbank Den Haag referred to the CJEU was the following:
Is the notion of ‘shape’ within the meaning of Article 3(1)(e)(iii) of [the 2008 Trade Mark Directive, ie the absolute ground for refusal concerning signs consisting exclusively of "the shape which gives substantial value to the goods"] (‘Form’, ‘vorm’ and ‘forme’ in the German, Dutch and French language versions of the Trade Marks Directive respectively) limited to the three dimensional properties of the goods, such as their contours, measurements and volume (expressed three-dimensionally), or does it include other (non three-dimensional) properties of the goods, such as their colour?
As readers will remember, this case has featured: a first Opinion of Advocate General (AG) Szpunar [reported by The IPKat here]; the reopening of the oral procedure and the assignment of the case to the Grand Chamber, so that the CJEU would rule with a greater (13) number of judges than the ordinary chamber procedure (3 or 5 judges), on consideration of the topicality of the issues underlying this reference for a preliminary ruling; and a second Opinion of AG Szpunar [which has sparked some controversy regarding its actual interpretation: see Katpost here].

A pair of Louboutin pumps
The text of the judgment is not yet available, but according to the press release:
In today's judgment, the Court takes 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 points 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 more detailed analysis will follow as soon as the judgment becomes available: stay tuned!
BREAKING: CJEU rules that Louboutin red sole mark does NOT fall within absolute ground for refusal BREAKING: CJEU rules that Louboutin red sole mark does NOT fall within absolute ground for refusal Reviewed by Eleonora Rosati on Tuesday, June 12, 2018 Rating: 5


  1. After a first read, the judgment is somewhat of a let-down because it focuses on the concept 'shape of the product' in Article 3(e)(iii) of the previous trade marks directive. Under the EUTMD as modified by the Trade Mark Package, the absolute ground for refusal also extends to "another characteristic" of the product which gives substantial value to the goods. Arguably, the red colour on the sole of the shoe could be qualified as a characteristic other than a shape. Although the CJEU is bound by the referral, it would have been helpful if the judgment had at least included an obiter dictum in relation to the amended provision.

  2. Well I can see that, but of course they only needed to deal with the scope of the issue.

    I think it is the right outcome - to suggest that any mark consisting of colour described as applied to a surface is a shape mark is somewhat of a stretch, particularly given the description of the mark.

    Personally I cannot see that colour alone would be seen as a characteristic unless colour had a specific meaning for the goods in question. To make such a finding would be to exclude colour from protection, when it is specifically listed as a type of mark. Personally I believe this is best dealt with via distinctiveness and/or bad faith

  3. The Cat That Walks by HimselfTuesday, 12 June 2018 at 15:46:00 GMT+1

    The title of the BREAKING post is quite misleading: the reference Louboutin C-163/16 was only on Article 3(1)(e)(iii), that is, one of several other absolute grounds for refusal of the old Trade Mark Directive.


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