Seeing Red! – The fight for Trade Mark

Earlier this month the Court of Justice upheld Christian Louboutin’s Benelux trade mark (below) for the colour red applied to the sole of a high heeled shoe.

The proceedings came about following Louboutin’s discovery that a competitor, Van Haren, was selling shoes with red soles in the Netherlands. Loutboutin had a registered trademark for the red sole and initiated proceedings against Van Haren for trade mark infringement in the Dutch Courts, in response to which Van Haren sought to argue that Louboutin’s trade mark was invalid because the trade mark consisted of a shape resulting from the nature of the goods themselves, or the shape necessary to obtain a technical result or a shape which gives substantial value to the goods.

Louboutin’s description of the mark in its trade mark application made it clear that the contour of the shoe is not part of the trade mark but intended to show the positioning of the mark. However, Van Haren argued that the mark is a two dimensional figurative (image) mark which consists of a red coloured surface.

The Dutch Court referred the question as to whether the mark consisted exclusively of a shape to the Court of Justice, who ruled that it does not because the trade mark applied for was limited to the colour, and therefore the mark did not consist exclusively of a shape. Accordingly, Louboutin’s trade mark was upheld. The case has now been returned to the Dutch Court to determine Louboutin’s claim for trade mark infringement in the light of the decision that its trade mark is valid.

In the infringement claim the Dutch Court had found that a significant proportion of consumers of women’s high heeled shoes in the Benelux states were able to identify Louboutin’s shoes as originating from Louboutin and to distinguish them from other high heeled shoes. Accordingly, the red colour of the shoes was perceived as a trade mark in relation to those goods and gives substantial value to the shoes since it played an important role in the consumer’s decision to purchase the shoes.

This case highlights the substantial value that can be attached to a brand and the importance of protecting your brand with a trade mark. Further, trade marks are not limited to words and images. Colour, smells and sounds can also be protected by trade marks. If a specific colour is an important part of your brand and consumers can identify your product or service as a result of a particular colour, it would be advisable to consider protecting that colour as a trade mark.

Acumen Business Law can advise you as to whether your brand, whether it is in the form of a word, logo, colour, smell or sound, can be protected by a trade mark. We can also assist you in protecting your brand if a competitor seeks to take advantage of the goodwill you have created by copying all or part of your brand.