The Authors' Take - EU General Court ruling opens – partially – the door to the protection of the famous “Damier Azur” of Louis Vuitton

EU General Court ruling opens – partially – the door to the protection of the famous “Damier Azur” of Louis Vuitton

by Pierre Massot

On 10 June 2020, the EU General Court rendered a decision (Louis Vuitton Malletier v EUIPO, T-105/19) which could open the door to trade mark protection of Louis Vuitton famous “Damier Azur”. The case dates back to 2015 when a Polish man challenged successfully before the EUIPO the international registration of this sign by Louis Vuitton Malletier (No 986207) for goods in Class 18:

In a nutshell, the Court annulled the decision of the Board of Appeal. It first held that it was a well-known fact that the chequerboard pattern has always existed in decorative arts and that the Damier Azur pattern did not depart significantly from the norms and customs of the sector. It concluded that it had no inherent distinctive character. Nevertheless, the Court considered that it cannot be excluded that this pattern could have acquired distinctiveness through use in the EU and that the Board of Appeal had failed to examine all the evidence relating to the use of the mark at issue. Interestingly, the General Court underlined that not having physical shops in some Members States does not necessarily prevent the relevant public from becoming familiar with and recognizing the mark in question.

It is therefore a mixed decision for the French fashion house. At the same time, it illustrates how it can be problematic to protect iconic patterns under European trade mark law and could also pave the way for more pragmatism concerning the acquisition of distinctive character of EU trade mark.

This contribution exposes the context of this case and its practical implications, which remain to be confirmed. In particular, it analyses, in a critical way, the consequences of admitting a broad definition of well-known facts and the difficulty for EU trade mark holders to prove the acquisition of distinctiveness. It expresses hope that this decision will help to strike a more balanced system concerning, at least, this last issue.

[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]

The Authors' Take - Louboutin v Van Haren

AG Szpunar’s position on Louboutin’s red sole mark: 

a shoo-in for a shape mark

by Luxmi (“Lux”) Rajanayagam

Queen Mary, University of London

Is Louboutin’s red sole mark (shown below) a position mark, a colour mark or a shape mark?

That was the starting point for Advocate General (AG) Szpunar in his Opinion in Case C-163/16 Christian Louboutin, Christian Louboutin SAS v Van Haren Schoenen BV EU:C:2017:495 (22 June 2017).

Louboutin sued Dutch footwear retailer, Van Haren, for infringing the Benelux registration of its red sole mark by selling high-heeled women’s shoes with red soles.  In response, Van Haren contended the red sole mark was invalid since it was a 2D mark in which the colour red, when applied to the soles of shoes, conformed to the shape of the shoes, thereby giving them substantial value.     

The District Court of The Hague, Netherlands is now seeking guidance from the Court of Justice of the European Union (CJEU) on whether the notion of ‘shape’ pursuant to the absolute ground for refusal or invalidity under Article 3(1)(e)(iii) of the Trade Mark Directive (2008/95/EC), which concerns signs consisting exclusively of the shape which gives substantial value to the goods, includes non-3D properties of the goods such as their colour.

According to the AG, Louboutin’s red sole mark is neither a position mark nor a colour mark but a shape mark, specifically “a mark consisting of the shape of the goods and seeking protection for a colour in relation to that shape.”  Accordingly, Louboutin’s red sole mark potentially falls within the prohibition under Article 3(1)(e)(iii).  However, as the AG pointed out, the concept of shape which “gives substantial value” relates only to the intrinsic value of the shape and not to the reputation of the mark or its owner.

To overcome the prohibition under Article 3(1)(e)(iii), Louboutin will need to prove that the attractiveness of its red-soled high heels arises from the reputation of its red sole mark or as the owner of that mark and not from the intrinsic value of the shape.  On the face of it, that should not be too difficult since it is because consumers are head over heels for Louboutin’s red-soled high heels that competitors have created their own copycat versions.

Let’s however wait to hear what the CJEU says.

[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP).]