Christian Louboutin SA’s registered trademark on red-soled shoes is one of the most litigated intellectual property rights in the fashion industry in recent years.  In a decision on the validity of the trademark in March, the Brussels District Court held against Louboutin and declared the trademark void in Belgium, the Netherlands and Luxembourg.

Louboutin had brought the case against Van Dalen Footwear BV, a Netherlands-based shoe company, for allegedly infringing its registered trademark in the Benelux region.  However, the Belgian court granted the counterclaim and ruled that the red sole could not be trademarked under European law.  The decision was primarily based on the judge’s determination that the trademark constituted a shape mark, rather than a color mark.  A shape mark cannot be registered under European trademark law if it gives substantial value to goods, a provision which exists to prevent a company monopolizing a technical, functional or aesthetic quality.  In this case, as the red sole was held to be a shape mark which gave substantial value to Louboutin shoes, the trademark was declared invalid. 

This European decision is in contrast to the US Second Circuit’s September 2012 ruling in which Louboutin’s US trademark was upheld (albeit in a narrowed form whereby the trademark was limited to situations where the red sole was matched with a contrasting upper).  Although Louboutin was unsuccessful in obtaining an injunction against Yves Saint Laurent America Inc. from selling all-red shoes, the Second Circuit specifically affirmed that single-color marks could receive trademark protection with the Louboutin red sole being a “distinctive symbol”.

It remains to be seen whether the decision in the Benelux could impact Louboutin’s trademark registrations in other European countries.  In the meantime, the Brussels Court’s decision highlights the flexibility open to European courts in this domain and is a useful reminder of the difference in treatment between shape marks and color marks under European law.  Brands companies applying to register a shape mark should consider carefully whether a court would uphold such registration, or whether it might be invalid as a result of the “substantial value” restriction.

The decisions in Europe on the Louboutin trademark specifically have thus far been mixed, with the Brussels District Court itself departing from an earlier decision of the Second Board of Appeal of the EU’s Office for Harmonization in the Internal Market which had classified the mark as fanciful and unexpected.  The French Supreme Court on the other hand has previously declared the red-sole trademark invalid for lack of distinctiveness.  In all likelihood this matter may be before the European courts again in the near future.

Covbrands will keep readers posted on developments.