Red soles spur court battle

On 14 June 2018, the European Court of Justice (ECJ) handed down its judgement in the long running battle between the French fashion house, Christian Louboutin (Louboutin) and Van Haren Schooner BV (Van Haren).

In 2009, Louboutin filed an application for its famous red sole, Pantone 18-1663TP, claiming exclusive rights in the colour as applied to the soles of the shoes. The trade mark proceeded to registration in 2010 in class 25, for “high-heeled shoes”.

However, in 2012 Van Haren, which operates a number of retail outlets in The Netherlands started selling high-heeled women’s shoes with the red soles similar to those made famous by Louboutin.

Louboutin brought trade mark infringement proceedings against Van Haren based on its trade mark in the Rechtbank Den Haag (District Court of The Hague,). This court delivered a default judgement upholding some of Louboutin’s claims for trade mark infringement.

Van Haren challenged the judgment handed down by District Court of The Hague, arguing that Louboutin’s trade mark was invalid on the basis of Article 2.1(2) of the Benelux Convention dealing with the registration of trade marks in Belgium, The Netherlands and Luxembourg.

Article 2.1(2) prohibits the registration of signs consisting solely of a shape which results from the nature of the goods, which gives a substantial value to the goods or which is necessary to obtain a technical result.

Van Haren argued that Louboutin’s trade mark was a shape trade mark that consists of a red coloured surface and therefore not capable of registration.

However, the ECJ ruled that Louboutin’s trade mark did not seek to protect the shape of the sole but instead sought to protect the application of the colour to Louboutin’s shoes. The matter will now be transferred back to The Hague Court to deliver the final ruling based on the ECJ’s decision.

This judgement is important for brand owners for whom colour forms an important part of their brand.

This is something companies like Absa and Cell C will have to keep in mind as both companies embark on their rebranding campaigns.

Although, the South African Trade Marks Act makes provision for the registration of a colour trade mark, non-traditional trade marks, especially colour, have in the past proven difficult to register (think Cadbury and the colour purple) and the enforcement of these trade marks remains untested in the South African courts.

However, as our courts have in recent times adopted a somewhat Eurocentric approach, this ECJ decision could prove to be of great significance.

However, it is not all doom and gloom for brand owners in South Africa, especially for those who have built up a reputation using a specific colour. The Advertising Standards Authority of South Africa (ASA) also provides an alternative mechanism for brand owners whose use of colour has built up advertising goodwill. The ASA it has a number of decisions involving the use of colour under its belt.

However, the ASA has indicated that it is only in very exceptional circumstances that it will it come to the conclusion that the adoption and use of a single colour will result in advertising goodwill, with many of its favourable decisions involving colour combinations.

This article was first published in the Business Day Business Law & Tax Review.

Date published: 14 August 2018
Author: Dineo Modibedi