On 22 June 2017, Advocate-General Szpunar (the "AG")
gave his opinion in a dispute between Christian Louboutin
("Louboutin") and Van Haeren Schoenen BV ("Van
Haeren") (the "Opinion").
In 2012, Van Haeren started selling high-heeled women's
shoes with red soles. Faced with an action by Louboutin on the
basis of trade mark infringement, the Rechtbank of Den Haag (the
"Court") stayed the proceedings and referred a question
for a preliminary ruling to the Court of Justice of the European
Union (the "ECJ") with regard to the interpretation of
Article 3(1)(e)(iii) of Directive 2008/95/EC to approximate the
laws of the Member States relating to trade marks (the "Trade
Mark Directive"). This provision states that signs consisting
exclusively of a shape which gives substantial value to the goods
must not be registered or, if registered, must be declared invalid.
Among other things, the Court asked whether the notion of
"shape" within the meaning of that provision was limited
to the three-dimensional properties of the goods or if it included
other (non-three-dimensional) properties of the goods such as their
In his Opinion, the AG first underlined the potential
anti-competitive effects of signs that may not be dissociated from
the appearance of the goods and the need to keep specific signs in
the public domain.
Second, the AG held that the Louboutin trade mark should be
considered as a trade mark combining colour and shape, rather than
consisting of a colour per se.
As a consequence, the AG examined whether the prohibition of
functional signs laid down in Article 3(1)(e) of the Trade Mark
Directive applied to signs in which colours are integrated into the
shape of the goods. The AG recalled that the purpose of that
provision was to prevent trade mark protection from granting its
proprietor a monopoly on technical solutions or functional
characteristics of a product which a user is likely to seek in the
products of competitors. Technical solutions and functional
characteristics must be kept in the public domain.
Because Article 3(1)(e) of the Trade Mark Directive only
prohibits signs which consist exclusively of functional features,
it is settled case-law that this provision does not prevent
registration of signs that, although consisting of a shape of a
good, also incorporate a significant non-functional element. The AG
therefore suggested that it belongs to the national courts to
assess whether the colour integrated into a shape is a functional
Third, the AG clarified the concept of shapes that "give
substantial value" to the goods, given that it is a ground for
refusal under Article 3(1)(e)(iii) of the Trade Mark Directive. The
AG first recalled that this provision is designed to prevent the
monopolisation of external features of goods which are essential to
their market success, and thus to prevent that the trade mark
protection be used to gain an unfair advantage. However, he added
that this provision only applies when the advantage stems from the
intrinsic value of the shape and not from the reputation of the
trade mark or its proprietor.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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