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The use of a bright red sole on a stiletto shoe is, for many people, synonymous with luxury fashion house, Christian Louboutin. Hugely popular, the red sole demonstrates (at least to those who are interested – the writer very much suspects that her significant other would not even notice) the wearer to be a proud owner of a pair of high end, designer shoes.
The fashion industry churns out a multitude of designs each year; more often than not, those designs are transitory, popular only until the next big trend.
Consequently, the creation of a design that proves to be as iconic and enduring as the Louboutin red sole is the exception, rather than the rule.
With that in mind, it is entirely understandable that Louboutin wanted to prevent others from cashing in on its design and reputation; in order to do that it applied for a trade mark within Benelux, with that application being closely followed by an application for an EU trade mark.
The EU application and subsequent registration proved controversial from the outset, with the application being challenged through opposition proceedings. Although the EU trade mark was finally registered in 2016 (the EU registration appears here), the validity of the trade mark is in question, following the recent Attorney General Opinion on “substantial value.”
For the uninitiated, a registered trade mark can be declared invalid if…
“it is a shape, or another characteristic, which gives substantial value to the goods.”
Much was made of whether the Louboutin trade mark was in fact a shape mark or a position mark; if the latter, then the ground for invalidity (so the argument went) would not apply. However, the Opinion makes clear that, even if the mark registered was a position mark, the ground for invalidity would still be available. In any event, it was felt that a position mark is not independent of the shape of the goods and further that the registered trade mark was in fact a ‘sign consisting of the shape of goods, seeking protection for a certain colour.’
Finally, and perhaps of use to Louboutin, is that whilst public perception will be taken into account when assessing whether the aesthetic characteristics of a mark add substantial value (and thus rendering the mark liable for cancellation), the reputation of either the mark or the proprietor will not. The question to be decided therefore appears to be whether the substantial value flows from the aesthetics of the red sole or from Louboutin’s reputation. This is not an easy distinction to make, not least as it could be argued that it is the recognition of the red sole as originating from Louboutin which is the value, as opposed to the red sole itself.
The trade mark has not yet been cancelled and it will be the role of the referring Court to decide whether it will follow the Opinion. Many commentators have signalled that they consider the Opinion to be a death knell for the trade mark. That, however, remains to be seen.
Emma Ward is a Partner at Nelsons specialising in Intellectual Property disputes. For further information, please contact Emma on 0800 024 1976 or email newbusinessteam@nelsonslaw.co.uk