News & Blog

Seeing Red! – The fight for Trade Mark

04/07/2018 | Sally Mouhim

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.
Sally Mouhim
Commercial Solicitor Dispute Resolution

For all your personal legal needs visit our sister firm Acumen People

Website More info & booking
Contact ACUMEN
Need more information? Get in touch.
 
What our clients say
"...we have used Acumen Business Law several times, not once have they failed to deliver the right result. Highly recommended."
Kevin Byrne | Checkatrade
"Its refreshing to have a new law firm on the scene which is challenging the more formal companies. I found Acumen very friendly, professional and thorough in my first dealings with them."
Nigel Pamplin | Prime Education
"...Acumen has proven to be an essential and trusted partner for the last 4 years. Through their advice, assistance and top quality work has consistently delivered excellent ROI..."
Robin Scott | Makemedia
"Tegen Ltd has used Penina’s services for a number of our businesses legal requirements. We thoroughly recommend the services and advice that she and her team provide."
Richard Smith | Tegen Ltd
"I have had need of Josh's and Acumen's services over the past couple of years, but fortunately I couldn't be in better hands. I couldn't give a stronger recommendation."
Jonathan Glendenning | Summer Rain Films Ltd
"I have used ACUMEN BUSINESS LAW on many occasions since switching to them. They’re a real breath of fresh air and they get the job done. I just wish I had come across them beforehand."
Joakim Roth | Light Foot LED
"We have used ACUMEN BUSINESS LAW and have been absolutely delighted with the level of understanding of our business that they have..."
Jon Clayson | Hunters Letting Limited
x

We use cookies on our website to improve your browsing experience.


By continuing to browse this website, we assume that you are happy for us to use cookies. To find out more please click here.