Case C‑163/16
Christian Louboutin and Christian Louboutin SAS
v
Van Haren Schoenen BV
(Request for a preliminary ruling from the rechtbank Den Haag)
(Reference for a preliminary ruling — Trade marks — Absolute grounds for refusal or invalidity — Sign consisting exclusively of the shape of the product — Concept of ‘shape’ — Colour — Position on a part of the product — Directive 2008/95/EC — Article 2 — Article 3(1)(e)(iii))
Summary — Judgment of the Court (Grand Chamber), 12 June 2018
Approximation of laws — Trade marks — Directive 2008/95 — Grounds for refusal or invalidity — Signs consisting exclusively of shape giving substantial value to the goods — Mark consisting of a colour applied to the sole of a high-heeled shoe
(European Parliament and Council Directive 2008/95, Art. 3(1)(e)(iii))
Article 3(1)(e)(iii) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that a sign consisting of a colour applied to the sole of a high-heeled shoe, such as that at issue in the main proceedings, does not consist exclusively of a ‘shape’, within the meaning of that provision.
As noted by the European Commission, in the context of trade mark law, the concept of ‘shape’ is usually understood as a set of lines or contours that outline the product concerned.
It does not follow from Directive 2008/95, the case-law of the Court, or the usual meaning of that concept, that a colour per se, without an outline, may constitute a ‘shape’.
Nevertheless, the question arises as to whether the fact that a particular colour is applied to a specific part of the product concerned results in the sign at issue consisting of a shape within the meaning of Article 3(1)(e)(iii) of Directive 2008/95.
In that regard, it must be noted that, while it is true that the shape of the product or of a part of the product plays a role in creating an outline for the colour, it cannot, however, be held that a sign consists of that shape in the case where the registration of the mark did not seek to protect that shape but sought solely to protect the application of a colour to a specific part of that product.
In any event, a sign, such as that at issue in the main proceedings, cannot be regarded as consisting ‘exclusively’ of a shape, where, as in the present instance, the main element of that sign is a specific colour designated by an internationally recognised identification code.
(see paras 21-24, 26, 27, operative part)