“While ordinarily Christian Louboutin does not comment directly on pending matters, we are making an exception in this instance to correct what appears to be misleading reports of the opinion of M. Szpunar, Advocate General, which is seen to impact our trademark adversely. We disagree.
The summaries of M. Szpunar’s opinion do not correctly reflect his view. The recent news seems to focus on M. Szpunar’s views that the combination of a color and a shape may be refused trademark protection. However, a close reading of the full opinion of M. Szpunar in fact supports trademark protection for our famous red sole, rather than threatening it.
In his opinion, Advocate General Szpunar states that “The concept of a shape which ‘gives substantial value’ to the goods, (…), relates only to the intrinsic value of the shape, and does not permit the reputation of the mark or its proprietor to be taken into account.”
Applying Mr. Szpunar’s opinion to our case support the validity of our trademark since the shape of the outsole to which the red color is applied is not intrinsically valuable. As for the Christian Louboutin’s red color, the only reason it has value is because of our marketing efforts as well as the public’s association of such color applied to a women’s heeled shoe outsole with Christian Louboutin. As such we are of the view that the opinion of M. Szpunar in fact supports the conclusion, even if it is in favor of the application of criteria for shape mark to our trademark (which we do not agree as we consider our mark to be a ‘position’ mark under EU law), that our mark is valid.
We are confident that in the decision yet to be taken by the court, the ECJ will, if it decides to agree on the application of the shape mark criteria to our famous red color as applied on the outsole of our shoes, seize the opportunity to give guidance to the national courts to determine whether the mark at issue “gives substantial value to the goods” (i.e. the reputation of the mark or of its creator should not affect the validity of this mark).
Advocate General Szpunar’s opinion is not a blow or a setback in Christian Louboutin protection of its famous red sole mark but is ultimately reinforcing our rights.
We would like to thank all the people who have shown us how strong they feel about our Maison and its iconic red sole mark.”
Paris February 7th, 2018