Shoe designer Christian Louboutin may be forced to take a step back in its attempt to stop other companies from selling shoes with red soles — a design feature that the company claims it has exclusive rights to.
The French designer went to court in The Netherlands to prevent high-end Dutch chain Van Haren from shoes that look very similar to Louboutins, which are a mainstay in fashionable circles around the world. Known for their distinctive red colour on the underside of the soles, it is not uncommon for them to retail at more than $1,000 US a pair.
But an advocate for the European Court of Justice said in an opinion Wednesday that the company’s attempts to trademark their iconic design in 2010 and again in 2013 don’t hold up to scrutiny.
In 2012, Van Haren started selling a high-heeled shoe with red on the underside, a move which prompted the legal fight.
In a press release, the court’s advocate general Maciej Szpunar “expresses doubts as to whether the colour red can perform the essential function of a trade mark.”
That’s because the colour of the sole cannot be considered to be separate from the shape of the sole, Szpunar said, and shapes are usually not protected under EU trademark law.
“A trademark combining colour and shape may be refused or declared invalid on the grounds set out under EU trademark law,” the ECJ said in a statement.
The opinion is not binding, but the ECJ tends to follow the opinions of its advocates in its rulings. Which means the attempt to patent a shoe colour and design may soon be kicked out.
Szpunar said his analysis focused exclusively on the issue of the shape of soles and not on the value of the branding of the shoes — he took “no account of (the) attractiveness of the goods flowing from the reputation of the mark or its proprietor”.
“Whilst relevant consumers may instantly recognize a red sole shoe being uniquely associated with Louboutin, trying to persuade the courts to grant monopoly rights with such a ‘badge of origin’ may well be an insurmountable hurdle,” said Sanjay Kapur, partner at intellectual property firm Potter Clarkson LLP.
Kapur said that if the ECJ were to follow Szpunar’s opinion “then this could mean that Louboutin would not be able to stop its competitors, including haute couture fashion houses, from offering shoes with red soles.”
Once the ECJ reaches its verdict, it will be up to the Dutch court that referred the case to take the final decision on whether Louboutin’s red sole can be a trademark.