- Alert: The Advocate General opines on validity of trade mark for red soles (Christian Louboutin v Van Haren Schoenen)
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IP analysis: The Advocate General (AG) has opined on the meaning of Article 3(1)(e)(iii) of Directive 2008/95/EC, in a reference from the District Court of the Hague which arose in the context of proceedings relating to the validity of Christian Louboutin’s figurative trade mark for a specific Pantone shade of red applied to the sole of a shoe. The question referred was ‘is the notion of “shape” within the meaning of Article 3(1)(e)(iii) of Directive 2008/95/EC 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?’ The AG’s opinion was that the classification of the contested mark was a matter for the referring court to determine, carrying out an overall assessment of the specification and other relevant materials. However, his view was that the mark at issue was best conceptualised as a mark consisting of the shape of the goods and seeking to protect a certain colour in relation to that shape. He opined that, if the contested mark were to be classified as a mark consisting of a colour per se, it would be appropriate to hold that it did not fall within the scope of Article 3(1)(e) of Directive 2008/95/EC, but that if it were to be regarded as a sign combining colour and shape (as he had suggested) it would potentially be caught by the prohibition in Article 3(1)(e)(iii) of Directive 2008/95/EC, which was to be interpreted as being capable of applying to a sign consisting of the shape of a product and seeking protection for a certain colour. As an additional point, he opined that the concept of a shape which ‘gives substantial value’ to the goods, within the meaning of that provision, relates only to the intrinsic value of the shape, and does not permit the reputation of the mark or its proprietor to be taken into account.
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