YOU CAN DO ANYTHING, BUT DON’T STEP ON MY RED-SOLEDSHOES!

1. YOU CAN DO ANYTHING, BUT DON’T STEP ON MY RED-SOLEDSHOES! Christian Louboutin, Christian Louboutin SAS v Van HarenSchoenen BV (Case C-163/16), opinion delivered by the Advocate General, MaciejSzpunar on 22 June 2017 A recent opinion by the Advocate General (“AG”) in the Court of Justice for the EU (“CJEU”) has highlighted fascinating trademark issues pertaining to the relationship between colour and shape Since 1992, Christian Louboutin, famed Parisian fashion designer of women's footwear and accessories, has painted the "outsoles" of his high-heeled shoes with a high-gloss red lacquer. In 2008, he registered the red sole as a trademark with the US Patent and Trade Office (USPTO), and this ‘Red Sole Trademark’ has been the subject of several legal disputes. More recently, the District Court of the Hague was faced with what has been a long-standing legal battle between Louboutin and Dutch shoemaker Van Haren, with the latest opinion of the Advocate General (AG) at the Court of Justice of the European Union (CJEU) constituting a serious potential loss for Christian Louboutin. But first, some background In 2011, Yves Saint Laurent (YSL), a Paris-based fashion house, released a collection of monochrome footwear in various colours including red. Louboutin filed a trademark infringement lawsuit against YSL, citing trademark

2. infringement and counterfeiting, false designation of origin, unfair competition, and trademark dilution, and seeking a preliminary injunction preventing YSL from any shoe, of any colour, incorporating the ‘Red Sole Trademark’. The court found that the ‘Red Sole Trademark’, as registered, was ineligible for protection, as it would preclude competitors’ use of red soles in all situations, including YSL’s single-colour use. The court also concluded that the ‘Red Sole Trademark’ had acquired a secondary meaning in the marketplace for women’s high-heeled shoes (and thus the “acquired distinctiveness” to merit protection) when used as a red sole that contrasts with the remainder of the shoe. As such, YSL’s single-colour red shoe did not infringe this and the USPTO was ordered to restrict the scope of Louboutin’s Red Sole Trademark accordingly. Since then, there have been several legal battles surrounding this 'Red Sole Trademark' in various jurisdictions. Then, in 2012, Dutch shoemaker Van Haren released its own shoe with a red sole. Louboutin sued Van Haren for trademark infringement, and a Dutch court ruled that the latter should stop manufacturing and selling black and blue shoes with red soles. But, the District Court of The Hague (a Netherlands court), prior to ruling on the issue itself, asked the CJEU for a preliminary ruling as to whether: “The notion of ‘shape’ is limited to the three- dimensional properties of the goods, such as their contours, measurements and volume, or does it include other (non three-dimensional) properties of the goods, [like] colour?” So what has happened now? The CJEU referred the matter to the AG, who – as recently as June 2017 – provided his opinion. Phone: +27 (0) 72 861 6385 Email: info@rmtucker.co.za Address Details: Johannesburg South Africa