The CJEU has ruled in Louboutin’s favour in deciding that its red sole is not a shape mark; it is a position mark for a colour applied to the sole of a shoe. This decision opens the door for brands to seek protection for position marks for colours or patterns applied to products or parts of products. For brands, the message is to ensure that a mark is accurately described in the registration to convey the brand signifier for which protection is being sought (and nothing more), and to steer clear of coverage which may engage absolute grounds for refusal or invalidity.
The description of Louboutin’s mark in the registration explicitly states that the contour of the shoe is not part of the trade mark but is intended to show the positioning of the red colour covered by the registration. As a consequence, the CJEU decided that whilst the shape of the product plays a role in creating an outline for the colour, a sign will not consist of that shape where the registration did not seek to protect that shape and sought solely to protect the application of a colour to a specific part of that product.
The CJEU also decided that Louboutin’s mark cannot be regarded as consisting ‘exclusively’ of a shape, as the main element is a specific colour designated by an internationally recognised identification code.
The case will now be referred back to The Hague Court in the Netherlands as the referring court to apply the CJEU’s judgment and determine issues of trade mark validity and infringement.