Is a colour a shape? Trade marking the outer appearance of your product by using colours

In a seemingly unending run of trade mark wars, iconic designer shoe brand, Louboutin, entered into the final stages of its dispute with Dutch company Van Haren last month. In 2013 Louboutin first sued its rival in the Dutch courts for trade mark infringement after it began selling high-heeled shoes with red soles similar to those sold by the French brand. Meanwhile, the French shoemaker had previously registered a trade mark in the Benelux region to prevent other footwear brands from placing the colour red on the soles of their products.

The Dutch court case ended up in the Court of Justice of the EU (CJEU) for clarification, following claims from Van Haren that Louboutin’s trade mark must be declared invalid. Its argument? That the red sole functions as a “shape” that gives “substantial value to the product”, and that such shapes are barred from trade mark protection.

In the end, the CJEU ruled in favour of Louboutin, stating that the trade mark in question does not relate to a specific shape of sole for high-heeled shoes, since the description of the mark explicitly excludes the contour of the shoes, which in the representation accompanying the trade mark application is intended purely to show the positioning of the red sole. However, the Dutch court still has to rule on the validity issue and, even more importantly, on whether Van Haren did indeed infringe the trade mark.

The CJEU’s decision certainly appears to be a great victory for businesses looking to use and protect the position of single colours on their products (or at least on parts of them). However, we must take into account the fact that this decision was made under the 2008 Trade Mark Directive, which only excluded “shapes that give substantial value to the product”. Until January 2019, EU Member States are required to follow the incoming Trade Mark Directive 2015, which excludes from trade mark protection “signs which consist exclusively of the shape or another characteristic, that give substantial value to the goods”.

Under the new Trade Mark Directive, Louboutin would have no cause for celebration. The distinctive red colour of the sole would most likely be considered as a characteristic that does indeed give substantial value to the shoe.

The Louboutin case demonstrates the lengths brands need to go to protect their intellectual property. Not least due to the new Trade Mark Directive brand owners should ensure that they do not only go for trade mark protection but consider registered design rights that exist on national and on EU level, in order to protect the outer appearance of their products.

Registered design rights cannot be invalidated by arguing that a characteristic of the sign or design gives substantial value to the goods, since they are specifically made to protect the appearance of a product, or parts of a product – provided the design is new and has individual character.

However, one of the major differences between designs rights and trade marks is that designs can only be protected for 25 years after application, while trade marks can be renewed continuously and protected forever essentially. This is why brand owners are well advised to go for both ways of protection if they wish to monopolize the appearance of their product, especially if this consists of the specific positioning of a single colour. It’s also why the subtle change to the wording of the Trade Mark Directive is so powerful – it essentially removes the potential for protection in perpetuity for many facets of a product.

Design rights end after 25 years, and copyright and passing off protection might not always be available as a last resort thereafter. Therefore, brand owners should not only use the outer appearance of a product as source indicator, especially not only one colour on a substantial portion of their product (here: the entire sole). Additionally, word marks being still the no. 1 source indicator should be used. Further, colour combinations come into question or a certain positioning of a colour (but not the entire bottom for instance) or another element.

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