Belgium: Brussels Court Of Appeal Reestablishes Validity Of Louboutin’s Red Sole Trade Mark

In a judgment of 18 November 2014, the Brussels Court of Appeal (the "Court") quashed an earlier decision of the President of the Brussels Commercial Court (See, VBB on Belgian Business Law, Volume 2014, No 4, p. 18, available at www.vbb.com) and reestablished the validity of Louboutin's Trade Mark for red soles.

The dispute before the court relates to an action brought by Louboutin, a French designer of luxury shoes, against Van Dalen Footwear B.V. ("Van Dalen"), a Dutch retail shoe store. In January 2013, Louboutin found out that Van Dalen was selling red-soled high-heeled women's shoes. Louboutin claimed that Van Dalen infringed its Benelux figurative Trade Mark. The Trade Mark at issue had been registered by Louboutin on 28 December 2009 (no. 0874489) for "high-heel women's shoes" (class 25 of the Nice Classification).

Louboutin initiated cease-and-desist proceedings against Van Dalen in August 2013. In its defence, Van Dalen claimed that Louboutin's Trade Mark was invalid.

In its judgment of 20 March 2014, the Commercial Court rejected Louboutin's argument that the Trade Mark should be regarded as a position Trade Mark (i.e., a Trade Mark which does not offer protection for the sign as such, but rather for the specific position of the sign on the product) and/or a colour Trade Mark.

Instead, the Commercial Court held that the Trade Mark should be considered as a shape mark. On this basis, the Commercial Court found that the Trade Mark falls within the absolute grounds for refusal contained in Article 2.1(2) of the Benelux Convention on Intellectual Property (Trademarks and Designs) as the red sole gives the shoe its substantial value (i.e., people were willing to pay more for red-soled shoes). As a result, the Trade Mark should, according to the Commercial Court, be excluded from Trade Mark protection.

In addition, the Commercial Court found that the Trade Mark lacks distinctive character because red-soled shoes are, in the Commercial Court's opinion, common on the market. It held that the red sole does not indicate that it originates from Louboutin.

The Brussels Court of Appeal overturned the Commercial Court's decision. It rejected Van Dalen's viewpoint that red-soled shoes cannot be a graphic presentation and thus must be refused registration under Articles 2.5 and 2.8 of the Benelux Convention on Intellectual Property (Trademarks and Designs). The Court of Appeal held that the Trade Mark application described the sign in a sufficiently detailed and accurate manner, e.g. by indicating the internationally recognized colour code of the colour for which Louboutin seeks protection when applied to the sole of a shoe.

As regards the form of the Trade Mark, the Court of Appeal considered that the Trade Mark should not be regarded as a shape mark, but instead constituted a figurative Trade Mark. The red colour is considered to be an element of that figurative Trade Mark. The Court of Appeal added that affixing a figurative Trade Mark on a specific shape does not automatically make the Trade Mark a shape Trade Mark. It referred in this context to the wording of the Trade Mark registration: "Red. The Trade Mark consists of the red colour (Pantone 18-1663TP) of the sole of the shoe as depicted (the shape of the shoe does not form part of the Trade Mark but has its purpose to indicate the place where the Trade Mark is affixed)". According to the Court of Appeal, it clearly follows that the shape of the sole itself does not form part of the Trade Mark.

Finally, at the time of registration, the red sole did derogate significantly from the common practice in the sector, said the Court of Appeal. Consequently, it has distinctive character, which allows people to recognise the red-soled shoes as originating from Louboutin and distinguishes the shoes from other footwear. The Court of Appeal also highlighted the fact that Louboutin does not merely use a red sole on an incidental basis or for decorative purposes, but uses it consistently as a distinguishing characteristic of Louboutin shoes.

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