The high heeled red sole shoes of Louboutin’s have finally strutted into the District Court of The Hague. With a decision of April 18, 2013 the Presiding Judge of said court (mr. E.A.W. Schippers) awarded Louboutin protection for its red sole trade mark in summary proceedings for infringement against Dutch company Van Haren Schoenen B.V. In the Benelux Louboutin registered said trade mark for shoes on December 28, 2009 (Benelux 0874489). In the registration Louboutin describes the trade mark as follows (translated in English, original text in French): ‘Red (Pantone 18-1663TP), the trade mark consists of the colour red (Pantone 18-1663TP) applied to the sole of a shoe as shown in the trade mark registration; the outline of the shoes is not a part of the trade mark, but serves to indicate on which part of the shoes the trade mark is applied.’ Louboutin relied on its trade mark against Van Haren, because Van Haren offered high heeled (although not as high heeled as Louboutin’s) black coloured shoes with a red sole for sale, amongst others in its shops in the Netherlands and through a website, aimed at the Netherlands in its entirety. Louboutin submitted article 2.20 paragraph (1)(a) (‘double identity’ infringement – identical sign, identical goods), (b) (confusion as to origin trade mark infringement – identical or similar sign – identical or similar goods) and (c) (dilution based trade mark infringement) of the Benelux Convention on Intellectual Property (BCIP) as grounds for the trade mark infringement claims against Van Haren. With regard to the c-ground Louboutin argued that Van Haren used references to Halle Barry for marketing its shoes, apparently because Halle Barry in public appearances almost always wears red soled Louboutin’s. According to Louboutin a red coloured sole as used by Van Haren harms the distinctiveness of Louboutin’s trade mark.
For its defense Van Haren first of all relied on the strict registration rules as set forth by the ECJ in the Libertel-case. The Presiding Judge rejected this: Louboutin’s red sole trade mark is not an abstract colour mark. The trade mark is (for the present in the current proceedings) considered to be a hybrid colour mark, since it bears not only the characteristics of an abstract colour mark, but also of a three dimensional trade mark for a specific red colour as set forth in the registration and as further defined in said registration.
With reference to the ECJ’s decisions in Maglite (case C-136/02) and Henkel (case C-144/06) and the General Court’s decision in X Technology Swiss (case T-547/08) the Presiding Judge holds that the distinctiveness of a trade mark as Louboutin’s sole mark has the ability to distinguish goods for which the mark is registered from goods originating from other companies. A trade mark which lacks distinctiveness can not be registered, or, if registered contrary to this rule of law, be nullified. The distinctiveness should be assessed in view of the goods and services for which the registration has been filed/granted, based on the perception thereof by the relevant public. This perception can be influenced by the nature of the trade mark for which protection is claimed. Because the average consumer is not used to derive the commercial origin of goods from signs which do not match with the goods themselves, such trade marks have only distinctiveness in so far as they deviate significantly from the standard or what is accepted in the industry concerned.
The Presiding Judge establishes that the Louboutin trade mark is provoked for high heeled ladies shoes. In this perspective the Presiding Judge provisionally finds that the sole trade mark coïncides with (a part of) these goods, since it concerns the colour of the sole. Accordingly the trade mark can not be considered apart from the goods. However the Presiding Judge sees no ground to review the question wether the sole mark deviates significantly from the standard or what is accepted in the industry concernec, since the Presiding Judge provisionally finds that the sole mark has obtained secondary meaning through use and is therefore distinctive.
It appears from the decision that Louboutin filed convincing materials from several media from which the Presiding Judge derives that the relevant public in the Benelux conceives the sole trade mark as a trade mark. The Presiding Judge rejects the defense from Van Haren that Louboutin uses the red sole only ornamental. Use by third party shoe makers like Yves Saint Laurent is not considered to be relevant. The Presiding Judge finds the difference in the consequent use of a red coloured sole on a similar way on all high heeled shoes, whereby these shoes can be recognized as shoes from a certain designer versus the use by a designer who uses different coloured soles and incidentally red coloured soles for shoes, dependent on the rest of the design.
The Presiding Judge holds that Louboutin’s trade mark infringement claim can be granted on the basis of article 2.20 par 1 sub b BCIP: the visual similarity between Louboutin’s sole mark and the red coloured sole used by Van Haren is ‘situated’ in the use of an almost identical red colour on an identical location (the sole) of identical goods (high heeled ladies shoes) for which the trade mark is registered. The statement by Van Haren that it uses a black coloured frame around the sole, does not convince the Presiding Judge: the overall impression is still the same. The black coloured frame does not become an independent visual feature, whilst the eye-catching red within the frame matches with the form and colour of the sole mark.
The visual effect which Louboutin achieves with the application of its trade mark is also shown in the shoes of Van Haren. According to the Presiding Judge one should also take into account that the average consumer has seldom a possibility to compare the sole mark and the soles used by Van Haren directly. The average consumer relies on an imperfect image. Therefore the Presiding Judge holds that there is a sufficient degree of similarity as required by article 2.20 par. 1 sub b BCIP.
Taking into account the identity of the goods, the distinctiveness of the trade mark and the (high) degree of similarity between the trade mark and the red coloured sole used by Van Haren, the Presiding Judge finds that the relevant public might be confused as to the origin of the soles used by Van Haren. That consumers might not err, because the Louboutins can only be bought in exclusive shops for a price which is not comparable to the price of Van Haren’s shoe, is found to be irrelevant: one should also take into account the so called post-sale confusion that may be provoked by seeing ‘others wearing high heeled shoes with red soles’. Accordingly the Presiding Judge holds that there is a confusion based trade mark infringement and grants a penalty including injunction to Louboutin. Van Haren should refrain from the use of the trade mark in the Benelux within 24 hours after service of the decision and is ordered to pay the procedural costs of Louboutin (€ 68.973,07).