The Frenchman’s attempt to prevent Dutch high-street chain Van Haren from selling iterations of his red soles went awry, however, when Maciej Szpunar, an advocate general at the European Court of Justice, advised The Netherlands court that Louboutin’s trademark protection rulings on the shade of red, which date from 2010 and 2013, might be invalid.
“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, outlining Maciej Szpunar’s advice to the judges hearing the case.
Szpunar expressed “doubts as to whether the colour red can perform the essential function of a trademark, that of identifying its proprietor, when that colour is used out of context, that is to say, separately from the shape of a sole,” the statement, according to the Business of Fashion, continued. In other words, Louboutin’s signature shade of red could not be considered separate from the shape of the sole, and shapes are usually not protected under EU trademark law.
Sanjay Kapur, partner and trademark attorney at intellectual property firm, Potter Clarkson LLP, added: “Whilst relevant consumers may instantly recognise 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.”
“This could mean that Louboutin would not be able to stop its competitors, including haute couture fashion houses, from offering shoes with red soles. The red sole could therefore become ubiquitous, which would seriously reduce the cachet associated with the Louboutin brand,” Kapur clarified.