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- Written by Soazig Thémoin
- Category: NEWS
- Created: 17 December 2018
CJEU confirms that a red outsole can constitute a valid colour mark!
Significance of an efficient description of the sign as part of trademark protection.
Benelux Tm registration n° 0874489
The Hague District Court gave to the Court of justice of the European Union (CJEU) the opportunity to clarify the protection’s contours of a colour trademark (connecting this aspect to the shape of the product in question). The litigious trademark is indeed described as follows: “The mark consists 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)” (point 9).
Thus, the Dutch Court wonders if the notion of shape  is limited, as its classic meaning, to the “three-dimensional” properties of a good (contours, measurements, volume, etc.) or includes as well other properties of a good, such as its colour.
In its judgment dated June 12th, 2018, the CJEU specified that “it does not follow from Directive 2008/95, the case-law of the Court, or the usual meaning of that concept, that a colour per se, without an outline, may constitute a ‘shape’” (point 22).
According to the CJEU, it is however necessary to wonder if the fact that a particular colour is applied to a specific part of the product concerned involves that the sign at issue consists in a shape.
In response, the CJEU considers that “the mark at issue does not relate to a specific shape of sole for high-heeled shoes since the description of that mark explicitly states 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 covered by the registration” (point 25). Lastly, judges add that the sign at stake “cannot 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”, that is to say the Pantone colour chart (point 26).
This interpretation, that recognizes the validity of the mark, should be applied now to the initial Dutch litigation as well as by various national Courts of the EU confronted to similar questions.
It is a new success for Christian Louboutin, since the Court of Appeal of Paris rejected last May a cancellation action filed against a French trademark constituted of the same sign.
The CJEU’s judgment is available through the following link: http://curia.europa.eu/juris/liste.jsf?num=C-163/16
Please do not hesitate to contact us, we are at your disposal to assist you when building your trademark’s strategy.
French and European Trademark & Design Attorney
 (see in this respect article 3, §1, point e of Directive 2008/95/EC of the European Parliament and of the Council).