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By Peter Leung
Fashion designer Christian Louboutin may not be able to register his iconic red soles as a trademark for high-heeled shoes because of European Union restrictions on registering some shapes, an advisor to the EU’s highest court said June 22 ( Louboutin v. Van Haren Schoenen BV , E.C.J., Case C-163/16, advocate general opinion 6/22/17 ).
The decision will affect the fate of Louboutin’s trademark registration in Benelux, the political union of Belgium, the Netherlands, and Luxembourg, and the interpretation of EU-wide law on protection for potentially functional trademarks.
EU law prohibits trademark registrations for shapes that result exclusively from a product’s nature—for instance, the shape that comes from a high-heeled shoe, according to Article 3(1)(e)(i) of the directive on trademarks.
The Court of Justice of the European Union’s advocate general said a color integrated into that shape, for trademark purposes, is part of the shape. That is necessary to prevent trademark owners from monopolizing elements essential to certain goods, such as colors, the advocate general said.
Advocate General Maciej Szpunar said that Louboutin is seeking protection for the color in use with the sole, and not the color by itself. If Louboutin’s trademark application was simply for the color red by itself, then it would not fall within the prohibition, Szpunar said.
Louboutin’s trademark application may be rejected, if the CJEU follows the opinion. Advocate general opinions have influence on final CJEU rulings, with some studies showing that the two arrive at the same conclusion about 80 percent of the time.
The CJEU will tackle what is sometimes referred to as “aesthetic functionality,” which the U.S. Court of Appeals for the Second Circuit partially addressed in 2012 in Christian Louboutin S.A. v. Yves Saint Laurent America Holding Inc.
The U.S. court didn’t rule whether Louboutin’s red sole trademark had aesthetic functionality and so can’t be registered. But it did say that the question is whether giving trademark protection would “significantly hinder competition,” similar to the monopolization concerns that Szpunar discussed in his opinion.
After the CJEU ruling, the case will go back to the Dutch court handling the trademark dispute between Louboutin and retailer Van Haren Schoenen BV, which was selling high-heeled shoes with red soles. The Dutch court referred the case to the CJEU to give the proper interpretation of EU law.
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