In a trademark copying case pending before the EU courts (on referral from the Dutch Court) the Louboutin trademark is being challenged as a defence to the claim. The case is Christian Louboutin and another –v- Van Haren Schoenen BV. The outcome may result in this Louboutin trademark being revoked.
Here is a link to the trademark in question– https://www.boip.int/en/trademarks-register (quote 08474489 in Retrieve a Mark, Benelux Registration) . The trademark 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 trademark but is intended to show the positioning of the mark)’.
Now you might be wondering how such a well-known and recognised, and distinctive trademark might be challenged and revoked. To many many people, a red sole on a ladies shoe indicates a ‘Laboutin’ shoe.
The basic idea of trademark law is simple. When a person sees a trade mark on goods or services, he or she assumes it came from a particular source – a shop like Paul Smith, a manufacturer like JCB, or a well known brand like Nike. The Louboutin red sole surely now has the same level of recognition?
But over the years the interpretation of trademark law has become in my opinion unnecessarily complicated and overly academic in approach. The real world where shoes are bought and sold seems to have been forgotten.
The Advocate General in this case has stated that trademark law provides that the intrinsic value of the shape or colour used as a trademark is what counts and that the reputation of the trademark or of its owner – here Louboutin – should not be taken into account. So whether the ‘shape’ or ‘colour’ trademark – is iconic, valuable, recognisable, or distinctive through being actually used seems not to count.
That’s a long way from the real world and out of touch. Maybe the court will reject this approach and take trademark law back to the basics of a brand as a badge of origin.
And even if the trademark is revoked, other laws can act as a back up to protect brands such as passing off in the UK and unfair competition laws in places like France and Germany. These rights do take into account the reputation and how well the brand is used.
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Please note this information is provided by way of example and may not be complete and is certainly not intended to constitute legal advice. You should take bespoke advice for your circumstances.