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Case law: Business can trade mark colours as the main element of the mark, when applied to a shaped part of its products

Businesses whose goods can be distinguished from others by the application of a particular colour, combination of colours, or pattern to a specific part of those goods, and where the main element of the mark is that colour, combination of colours or pattern, should consider whether to register it as a position mark.

July 2018

This update was published in Legal Alert - July 2018

Legal Alert is a monthly checklist from Atom Content Marketing highlighting new and pending laws, regulations, codes of practice and rulings that could have an impact on your business.

Famous shoe designer, Christian Louboutin, filed a trade mark application to protect the colour red when used on the sole of a shoe, irrespective of the shape of the sole – what the EU Intellectual Property Office calls a 'position mark'.

A rival objected to the mark arguing that EU law, which prevents registration of common shapes as trade marks, should apply. As shoe soles were a common (or 'prevented') shape, the trade mark was, therefore, invalid.

The CJEU ruled that it was clear from the description of the mark in Louboutin's registration that the contour of the shoe did not form part of the mark – it was a position mark that did not relate to a "specific shape of sole for high-heeled shoes". The mark was intended to show the positioning of the red colour covered by the registration.

It also found that "…a sign, such as that at issue, cannot, in any event, be regarded as consisting "exclusively" of a shape, where the main element of that sign is a specific colour designated by an internationally recognised identification code".

Louboutin will still have to prove that its position mark is distinctive, and not perceived as solely decorative or functional.

Operative date

  • Now

Recommendation

  • Businesses whose goods can be distinguished by the application of a colour, combination of colours, or pattern on a specific part of those goods, and where the main element of the mark is that colour, combination of colours or pattern, should consider whether to register it as a position mark

Case ref: Christian Louboutin and Christian Louboutin Sas v van Haren Schoenen BV, Case C-163/16

Disclaimer: This article from Atom Content Marketing is for general guidance only, for businesses in the United Kingdom governed by the laws of England. Atom Content Marketing, expert contributors and ICAEW (as distributor) disclaim all liability for any errors or omissions.

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