![\"\"](\"http:\/\/www.hoefer-pat.de\/wp-content\/uploads\/2018\/03\/Louboutin-1.png\")
<\/p>\nMr Christian Louboutin is a fashion designer who designs, amongst other things, high-heeled
\nshoes for women. A particular feature of those shoes is that the outer sole is always red. Mr
\nLouboutin and his company registered that trade mark in Benelux for \u2018footwear\u2019 in 2010 and for
\n\u2018high-heeled shoes\u2019 in 2013. The trade mark is described as consisting \u2018of the colour red (Pantone
\n18 1663TP) applied to the sole of a shoe as shown (the contour of the shoe is not part of the trade
\nmark but is intended to show the positioning of the mark)\u2019. It is reproduced below:<\/p>\n
<\/p>\n
The Van Haren company operates shoe retail outlets in the Netherlands. In 2012, Van Haren sold
\nhigh-heeled women\u2019s shoes with red soles. Mr Louboutin and his company brought proceedings
\nbefore the Netherlands courts seeking a finding of trade mark infringement by Van Haren. Van
\nHaren claims that the mark at issue is invalid. The EU trade mark directive sets out a number of
\ngrounds on which registration of a mark may be refused or declared invalid, particularly in relation
\nto signs that consist exclusively of a shape that gives substantial value to the goods. The
\nRechtbank Den Haag (District Court of The Hague, Netherlands) decided to refer questions to the
\nCourt of Justice in that regard. The referring court considers that the mark at issue is inextricably
\nlinked to shoe soles and that, according to the directive, the concept of \u2018shape\u2019 covers not only the
\nthree-dimensional properties of goods (such as their contours, measurements and volume), but
\nalso colours.
\nIn his additional Opinion following the reopening of the oral procedure, Advocate General Maciej
\nSzpunar maintains his view that the prohibition set out in the trade mark directive is
\ncapable of applying to a sign combining colour and shape. Accordingly, he proposes that the
\nCourt\u2019s answer should be that the grounds on which registration of a mark may be refused or declared invalid are capable of being applied to a sign consisting of the shape of the goods, and
\nseeking protection for a certain colour.
\nIn his first Opinion, the Advocate General had stated that the mark at issue had to be equated with
\none consisting of the shape of the goods, and seeking protection for a colour in relation to that
\nshape, rather than one consisting of a colour per se. He maintains that point of view, given that this
\nis not a wholly abstract shape, or one of negligible importance, but always the shape of a sole.
\nMoreover, he expresses doubts as to whether the colour red can perform the essential function of
\na trade mark, that of identifying its proprietor, when that colour is used out of context, that is to say,
\nseparately from the shape of a sole.
\nNevertheless, the Advocate General points out, as he had done in his first Opinion, that the
\nclassification of the mark at issue is a factual assessment to be made by the referring court. The
\nsame applies to the question as to whether the red colour of the sole gives substantial value to the
\ngoods. In his view, the position of the Netherlands court is clear on that point, since it is proceeding
\nfrom the premise that that question must be answered in the affirmative.
\nThe Advocate General also considers that the introduction of the concept of a \u2018position\u2019 mark into
\nEU law3 is not liable to qualify his considerations concerning the applicability of the ground for
\nrefusal or invalidity (laid down in the EU trade mark directive) to a sign such as that at issue.
\nSimilarly, the Advocate General has examined the scope of the new trade mark directive, the
\ndeadline for transposition of which is 14 January 2019. In that regard, he takes the view that the
\nreasons for the amendments introduced by the new directive (strengthening the trade mark
\nproprietor\u2019s monopoly and restricting third party rights) cannot easily be applied to the grounds for
\nrefusal or invalidity.
\nThe Advocate General also takes the view that the reference to the public\u2019s perception as a factor
\nwhich, among others, determines the characteristics giving substantial value to the goods, argues
\nin favour of the ground for refusal or invalidity applying to signs consisting of the shape of the
\ngoods and seeking protection for a colour in relation to that shape. In practice, the deciding factor
\nin relation to the public\u2019s perception is not the distinction between shape, colour or position marks,
\nbut rather the identification of the origin of the goods on the basis of the overall impression created
\nby a sign.
\nWith regard to the classification of the mark, the Advocate General points out that it is to be
\nassessed whether the registration of that sign would not run counter to the general interest in not
\nunduly restricting the availability of the characteristics represented by that sign for other operators
\noffering for sale goods or services of the same type.
\nLastly, as he stated in his first Opinion, the Advocate General notes that his analysis relates
\nexclusively to the intrinsic value of the shape, and must take no account of attractiveness
\nof the goods flowing from the reputation of the mark or its proprietor.<\/p>\n
<\/p>\n