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News - 17 January 2019

Red shoe soles can be protected as trade marks. That was the verdict of the Court of Justice of the European Union (ECJ) in a ruling from 12 June 2018 (Az.: C-163/16). They do not fall within the ambit of the prohibition on registering shapes.

There are a number of possible obstacles to registering a trade mark. According to one EU directive, a sign cannot be protected under trade mark law if, among other things, it consists exclusively of the shape of the goods in question which results from the nature of the goods themselves or is necessary to obtain a technical effect. We at the commercial law firm GRP Rainer Rechtsanwälte note that this is also true for shapes that give substantial value to goods.

The litigation before the Court of Justice of the European Union concerned the question of whether shoes with red soles can be protected under trade mark law as a distinguishing feature. The ECJ answered this question in the affirmative.

A fashion designer created high-heeled shoes for women, all of which were characterized by their distinctive red soles. He had these registered in the Benelux countries as a trade mark for shoes in 2010 as well as for high-heeled shoes from 2013. The description of the mark explicitly states that the contour of the shoe does not form part of the mark. Similarly, in 2012, a Dutch company brought shoes with red soles to market as well, but at a considerably lower price. The fashion designer took the view that his trade mark rights had been violated. The Dutch company alleged that the registered trade mark was invalid because signs which consist exclusively of shapes that give value to goods are not eligible for registration.

The ECJ held that the term “shape” is not defined in the relevant directive and is therefore to be interpreted according to its normal usage. It went on to say that it did not follow from the ordinary meaning of the term that a colour is capable per se of representing a shape if it is not spatially delimited. The Court ruled in the instant case that the mark did not relate to a specific shape of sole since the description of the mark explicitly states that the contour of the shoe does not form part of the mark.

Lawyers who are experienced in the field of intellectual property law can serve as expert advisors when it to comes to registering and protecting a trade mark as well as asserting claims in response to violations of trade mark rights.

Michael Rainer

Michael Rainer

Firm: GRP Rainer LLP
Country: Germany

Practice Area: Tax