According to Advocate General Szpunar, a trade mark combining colour and shape
may be refused or declared invalid on the grounds set out under EU trade mark law
The analysis must relate exclusively to the intrinsic value of the shape and take no account of
attractiveness of the goods flowing from the reputation of the mark or its proprietor
Mr Christian Louboutin is a fashion designer who designs, amongst other things, high-heeled
shoes for women. A particular feature of those shoes is that the outer sole is always red. Mr
Louboutin and his company registered that trade mark in Benelux for ‘footwear’ in 2010 and for
‘high-heeled shoes’ in 2013. The trade mark is described as consisting ‘of the colour red (Pantone
18 1663TP) applied to the sole of a shoe as shown (the contour of the shoe is not part of the trade
mark but is intended to show the positioning of the mark)’. It is reproduced below:
The Van Haren company operates shoe retail outlets in the Netherlands. In 2012, Van Haren sold
high-heeled women’s shoes with red soles. Mr Louboutin and his company brought proceedings
before the Netherlands courts seeking a finding of trade mark infringement by Van Haren. Van
Haren claims that the mark at issue is invalid. The EU trade mark directive sets out a number of
grounds on which registration of a mark may be refused or declared invalid, particularly in relation
to signs that consist exclusively of a shape that gives substantial value to the goods.1 The
Rechtbank Den Haag (District Court of The Hague, Netherlands) decided to refer questions to the
Court of Justice in that regard. The referring court considers that the mark at issue is inextricably
linked to shoe soles and that, according to the directive, the concept of ‘shape’ covers not only the
three-dimensional properties of goods (such as their contours, measurements and volume), but
also colours.
In his additional Opinion following the reopening of the oral procedure,2 Advocate General Maciej
Szpunar maintains his view that the prohibition set out in the trade mark directive is
capable of applying to a sign combining colour and shape. Accordingly, he proposes that the
Court’s 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
seeking protection for a certain colour.
In his first Opinion, the Advocate General had stated that the mark at issue had to be equated with
one consisting of the shape of the goods, and seeking protection for a colour in relation to that
shape, rather than one consisting of a colour per se. He maintains that point of view, given that this
is not a wholly abstract shape, or one of negligible importance, but always the shape of a sole.
Moreover, he expresses doubts as to whether the colour red can perform the essential function of
a trade mark, that of identifying its proprietor, when that colour is used out of context, that is to say,
separately from the shape of a sole.
Nevertheless, the Advocate General points out, as he had done in his first Opinion, that the
classification of the mark at issue is a factual assessment to be made by the referring court. The
same applies to the question as to whether the red colour of the sole gives substantial value to the
goods. In his view, the position of the Netherlands court is clear on that point, since it is proceeding
from the premise that that question must be answered in the affirmative.
The Advocate General also considers that the introduction of the concept of a ‘position’ mark into
EU law3 is not liable to qualify his considerations concerning the applicability of the ground for
refusal or invalidity (laid down in the EU trade mark directive) to a sign such as that at issue.4
Similarly, the Advocate General has examined the scope of the new trade mark directive, the
deadline for transposition of which is 14 January 2019.5 In that regard, he takes the view that the
reasons for the amendments introduced by the new directive (strengthening the trade mark
proprietor’s monopoly and restricting third party rights) cannot easily be applied to the grounds for
refusal or invalidity.
The Advocate General also takes the view that the reference to the public’s perception as a factor
which, among others, determines the characteristics giving substantial value to the goods, argues
in favour of the ground for refusal or invalidity6 applying to signs consisting of the shape of the
goods and seeking protection for a colour in relation to that shape. In practice, the deciding factor
in relation to the public’s perception is not the distinction between shape, colour or position marks,
but rather the identification of the origin of the goods on the basis of the overall impression created
by a sign.
With regard to the classification of the mark, the Advocate General points out that it is to be
assessed whether the registration of that sign would not run counter to the general interest in not
unduly restricting the availability of the characteristics represented by that sign for other operators
offering for sale goods or services of the same type.
Lastly, as he stated in his first Opinion, the Advocate General notes that his analysis relates
exclusively to the intrinsic value of the shape, and must take no account of attractiveness
of the goods flowing from the reputation of the mark or its proprietor.
NOTE: The Advocate General’s Opinion is not binding on the Court of Justice. It is the role of the Advocates
General to propose to the Court, in complete independence, a legal solution to the cases for which they are
responsible. The Judges of the Court are now beginning their deliberations in this case. Judgment will be
given at a later date.
NOTE: A reference for a preliminary ruling allows the courts and tribunals of the Member States, in disputes
which have been brought before them, to refer questions to the Court of Justice about the interpretation of
European Union law or the validity of a European Union act. The Court of Justice does not decide the dispute itself. It is for the national court or tribunal to dispose of the case in accordance with the Court’s
decision, which is similarly binding on other national courts or tribunals before which a similar issue is raised.
1 Article 3(1)(e)(iii) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to
approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25).
2 On 28 February 2017, the Court of Justice decided to refer the case to the Ninth Chamber. A hearing was held on
6 April 2017. On 22 June 2017, the Advocate General delivered his first Opinion. On 13 September 2017, the Ninth
Chamber decided to request the Court, pursuant to Article 60(3) of the Rules of Procedure of the Court of Justice, to
assign the case to a formation composed of a greater number of Judges. The Court subsequently reassigned the case to
the Grand Chamber. By order of 12 October 2017, the Court decided to reopen the oral procedure and invited the
interested parties to participate in another hearing, which took place on 14 November 2017.
3 Article 3(3)(d) of Commission Implementing Regulation of 18 May 2017 laying down detailed rules for implementing
certain provisions of Council Regulation (EC) No 207/2009 on the European Union trade mark (OJ 2017 L 205, p. 39).
4 Article 3(1)(e)(iii) of Directive 2008/95/EC.
5 Directive 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of
the Member States relating to trade marks (OJ 2015 L 336, p. 1).
6 Article 3(1)(e)(iii) of Directive 2008/95/EC.