Colin Hulme

Although a trade mark of a colour is not wholly unusual in the US, with brands such as UPS and Tiffany & Co successfully gaining such protections, the EU courts have been stricter and shown reluctance to follow suit. For instance, Cadbury recently had their iconic purple trade mark declared invalid by the UK courts, following a successful challenge by Nestle.

So what exactly is required to register a colour trade mark in the EU?

To register a colour trade mark, the usual requirements for a trade mark application must first be met. These are, it must be:

1. A sign;
2. Capable of graphical representation; and
3. Capable of distinguishing goods/services of one undertaking from those of other undertakings.

Due to the challenge of evidencing that a specific colour sets particular goods or services apart from competitors, obtaining colour trade marks has often proven difficult.

The Louboutin dispute

Louboutin’s use of now iconic red soles was established over 25 years ago, when the fashion designer applied his assistant’s red nail polish to the sole of a pair of the brand’s heels. The red soles were registered as a trade mark for ‘footwear’ in 2010, and for ‘high-heeled shoes’, more specifically, in 2013. In spite of the distinctive sole now being synonymous with the Louboutin brand to many consumers, protection of this aspect of their design in the European courts has been met with challenge.

The dispute began in 2012 when Louboutin brought action against Van Haren for alleged infringement of its trade mark. An injunction was granted against Van Haren which was then referred to the CJEU. Van Haren argued that Louboutin’s trade mark was invalid as a sign consisting exclusively of a colour is not registrable as a trade mark. Advocate General Szpunar agreed with Van Haren, during a preliminary assessment of the case, and noted that a trade mark combining colour and shape may be refused or declared invalid under EU trade mark law. He further expressed doubt as to whether the colour red can perform the essential function of a trade mark - of identifying its proprietor.

The CJEU’s judgment

This week however, the CJEU disagreed with the Advocate General’s view and found that Louboutin was not seeking to protect the shape of a shoe, merely the application of a colour to a specific part of it. The court found that the contour of the shoe does not form part of the mark and is intended purely to show the positioning of the red colour.

The court held that a sign, such as that at issue, cannot, in any event, be regarded as consisting ‘exclusively’ of a shape, where the main element of that sign is a specific colour designated by an internationally recognised identification code. Accordingly, the prohibition of the registration of shapes does not apply to Louboutin’s red sole trade mark.

Where are we now?

The case now returns to the Dutch court for a final judgment where, following from the CJEU’s ruling, it appears likely that the validity of Louboutin’s red sole trade mark will be confirmed and it can be enforced against Van Haren.

The judgment is a positive step for international brand owners seeking to protect their goods by use of colour trade marks to serve as a ‘badge of origin’ indicating the source of their products. We now have greater clarity on the ability to show the use made of colour on products when applying for colour trade marks.

Colin Hulme is a partner and Shannan Wilkie is a trainee at Burness Paull