On 9 March 2016, The Hague District Court referred the Dutch case on the validity of Louboutin's red sole trade mark to the Court of Justice of the European Union ('CJEU'). The legal proceedings in The Netherlands were initiated by Louboutin in 2013 claiming that Van Haren (represented by Taylor Wessing The Netherlands) infringed the Benelux trade mark rights of Louboutin by selling ladies shoes with high heels having red soles. The Benelux trade mark registration of Louboutin is shown above left. Pictures of the shoes offered by Van Haren are shown above right.
On 1 April 2015, the The Hague District Court rendered an interlocutory decision in the matter, inter alia concluding that the trade mark has characteristics of both a colour mark and a 3D mark because the colour red is depicted (positioned) on the sole of a high heel shoe. It also concluded that the trade mark has acquired distinctiveness through Louboutin's use and that if the trade mark is valid, Van Haren has infringed the trade mark rights of Louboutin.
However, the court also ruled that the coloured sole gives substantial value to the shoes. Van Haren had argued that, for that reason the trade mark is invalid pursuant to Article 2.1(2) of the Benelux Convention on intellectual Property (the equivalent of Article 3(1) (iii) of the EU Trade Mark Directive 2008/95/EC).
According to the court it is however unclear whether the definition of 'shape' is limited to 3D characteristics of (parts of) the goods (like contours) or if it also applies to other non 3D characteristics such as colour as Van Haren had argued.
After both parties had the opportunity to inform the court of their position on a proposed preliminary question being referred to the CJEU, the court decided on 9 March 2016 to ask the following (freely translated) question to the CJEU:
"Is the definition of 'vorm' in Article 3(1) (iii) of the Trade Mark Directive 2008/95/EC (in the German, English and French versions of the Directive called 'Form', 'shape' and 'forme') limited to the three dimensional characteristics of the goods such as contours, measurements and the volume thereof, or does it also applies to other (non-three dimensional) characteristics of the goods such as colour?"
It will be interesting to see whether the CJEU will decide if the shape mark exceptions also apply to characteristic of a shape such as colours, including whether or not these exceptions, now broadened in the new Directive (Article 4 of the Trade Mark Directive (2015/2436/EC) explicitly mentions 'the shape, or another characteristic'), also apply to the old Directive. In other words; can a characteristic of the shape of a trade mark give substantial value to the goods and by doing so prevent such characteristics being protected under trade mark law? If this were not the case, according to the District Court, it would result in the possibility for trade mark owners to prevent competitors using characteristics such as colours which are sought and appreciated by the public, and this appears to be in conflict with the rationale of the shape exceptions.
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