Louboutin's sole issue

Fashion designer Christian Louboutin has been struck a blow by the opinion of the European Court of Justice's Advocate General Maciej Szpunar that "shape" includes colour.

Christian Louboutin has been making shoes with the distinctive soles in Pantone 18 1663TP (or red, as it is more widely known) for over 25 years, and had argued that the trademark for "the colour red (Pantone 18 1663TP) applied to the sole of a shoe" qualified for protection. The fashion house now faces a nervous wait for a decision by the European Court of Justice as to whether it can continue protecting its signature style, or whether the style will be opened up to any other shoe-maker wishing to use it.

The litigation began with an application for an injunction against Dutch competitor Van Haren for their Halle Berry line in 2012. That application instigated a legal battle that has rumbled on for almost 6 years, and has now been referred back to the European Court of Justice for a decision on whether, in light of the Advocate General's opinion, the mark is valid.

There is mixed authority on the validity of trademarks on the basis of colour. In the UK, Cadbury and Nestle went head to head over the use of the colour purple (Pantone 2865C); and EasyJet famously ran into staunch opposition when attempting to enter the mobile phone market from a brightly coloured telecom provider.

Amongst the minefield that is the law on colour trademarks, there are also significant differences depending on jurisdiction. Christian Louboutin (for a convenient example) does hold a valid trademark "for red-soled shoes (where the rest of the shoe is not red)" in the USA.

If you have any questions on the above, please do not hesitate to contact the team at McDaniel & Co. on 0191 281 4000 or legal@mcdanielslaw.com.