Louboutin Trade Mark Rejection - 'Shape' Question Referred to CJEU

We recently reported on the rejection by the Swiss Federal Institute of Intellectual Property of a trade mark application by Christian Louboutin following news that the Swiss Federal Administrative Court had upheld the decision that red soles on his shoes are merely decorative and not distinctive.

The French Designer had argued that the red soles on his shoes have acquired distinctiveness and therefore can be protected as a trade mark but the Swiss Court, agreeing with the Swiss Federal Institute of IP, dismissed the argument.

A question in the case has now been referred to the Court of Justice of the European Union (CJEU) on the issue of shape. The question is:

"Is the notion of 'shape' within the meaning of Article 3(1)(e)(iii) of the Directive 2008/95/EC (the Trade Marks Directive) to approximate the laws of other Member States relating to Trade Marks limited to the three-dimensional properties of the goods, such as their contours, measurements and volume (expressed three-dimensionally), or does it include other (non three-dimensional) properties, such as their colour".

National courts refer questions on a specific point of law to the CJEU for what is a called a 'preliminary ruling', the ruling is binding as authority on the interpretation of the law referred – and to be applied by the national court in the national case in question – but is not a decision based on the facts of the case before the national court. However, the CJEU ruling is binding on all other national courts in terms of the interpretation and application of the specific legal point which is referred.

Article 3 of the Trade Marks Directive sets out the absolute grounds of refusal of registration for trade marks; article 3(1)(e)(iii) sets out that marks which consist exclusively of a 'shape' which gives substantial value to goods will not be registered. The interesting point regarding this reference, as observed by the IPKat, is that "not all language versions of the directive speak of 'shape'", examples being the French (forme), the German (form), and the Italian (forma) versions. The CJEU will always aim to iron out uncertainties in European legislation, with the ultimate aim of harmonising IP rights across Europe, so far as possible.

It will be interesting to see the CJEU's preliminary ruling on the above point.  We will keep you posted.