Louboutin has his competitors seeing red

French shoe designer, Christian Louboutin has secured victory in the European Court of Justice (ECJ), which will have his competitors seeing red, but not able to apply that colour to the soles of their shoes.

The designer registered the red soles as a trade mark for footwear in 2010 and more specifically for high-heeled shoes in 2013.  At first instance, the European Union’s advocate general said the red soles could not be protected as they relate to a shape (European trade mark law forbids the registration of shapes where they add substantial value to goods).  However, on Tuesday, the ECJ ruled that the trade mark wasn’t connected to the shape of the shoe, or more accurately the sole (as this would change with each different shoe), but rather the trade mark was the application of colour to a certain part of the shoe.

“The mark does not relate to a specific shape of sole for high-heeled shoes since the description of that mark explicitly states that the contour of the shoe does not form part of the mark and is intended purely to show the positioning of the red colour covered by the registration”

With this victory, the matter will be referred back to The Hague court, which is expected to confirm the validity of the red sole trade mark. The result is likely to secure Louboutin a monopoly for red-soled high heeled shoes and thereby preventing the sale of copycat versions of the famous red-soled high-heeled shoes.

In Australia, Louboutin has enjoyed a monopoly on the colour red as applied to the sole of a shoe since 3 February 2010 (Trade Mark No. 1352410).  It is a great example of how a specific shade of colour or combination of colours can be registered as a trade mark.

However, obtaining registration of a colour trade mark can be difficult and generally requires significant evidence of use demonstrating:

1. the public has come to identify that colour as being synonymous with a particular good or service (unless it’s a particularly distinct colour combination and pattern);
2. the colour alone is capable of distinguishing the good or service; and
3. the colour is the trade mark – not a part of the goods or their packaging.

Take home points

1. Colour is very effective in visually distinguishing your products from your competitors, if used properly.
2. If you are considering the use of colour in the branding of your products, we highly recommend discussing this with us to ensure the correct strategy is adopted and you can secure a monopoly in that colour.

If you have further queries about how you can register a colour as a trade mark, please contact our Intellectual Property team.

This article was written by Mark Metzeling, Special Counsel – Commercial.