Louboutin’s red high-heel sole is a distinctive (and figurative) sign of origin

by Axel P Ringelhann

As Frouke Hekker from the Novagraaf’s Competence Centre in Amsterdam reported last week, on 18 November the Court of Appeal in Brussels handed down judgement over Louboutin’s red high-heel sole trade mark (2014/AR/843). The 44 pages long judgement reversed the contested decision of the Commercial Court of Brussels, which was rendered earlier this year.

In a dispute with the Dutch shoe retailer Van Dalen, the court of first instance had declared Louboutin’s red sole trade mark, which is registered for “high-heeled shoes, except orthopaedic footwear” in Class 25 at the Benelux Office, as invalid. It reasoned that the red sole should not be assessed as a figurative or a colour mark, but as a 3D mark. The court then held that due to the substantial value of the trademark given by the shape itself, the trade mark was not able to be registered.

The Court of Appeal, on the other hand referred to the Benelux trade mark register, which expressly states that the trade mark consist of the colour red, is figurative and is applied on the sole of a shoe. The judges consequently assessed the sign at issue on the basis of a figurative trade mark. They found that the red sole departs significantly from the norm of what is common in the sector and that the filed documents sufficiently demonstrate that the relevant public perceive the sign as an indication of origin. What it is more, the court held that this conclusion could not be precluded by the fact that other designers of high-heeled shoes, such as John Doe, Yves Saint Laurent and Vivian Westwood, also apply a red colour to the sole of certain shoes.The Court of Appeal concluded that the application for invalidity is unfounded and that due to the (quasi-)identity between the signs and goods at issue, the Van Dalen-shoe constitutes an infringement of Louboutin’s red sole trade mark.

 

Axel Ringelhann, QMJIP Assistant Editor