Christian Louboutin has been embroiled in a bitter Court battle against Van Haren to protect his signature scarlet sole since 2012, when the Dutch shoe retailer, Van Haren, launched high-heeled shoes with red soles as part of their Fifth Avenue by Halle Berry line.

Louboutin claimed that this was an infringement of his trademarks in Belgium, the Netherlands and Luxemburg.  The Dutch Court in The Hague agreed and granted a temporary injunction against Van Haren.  In 2014 an appeal against this decision was launched which led to the matter being referred to the European Court of Justice (ECJ) for “clarification”.

In the latest instalment of the debacle the European Court of Justice considered Van Haren’s argument that Louboutin’s trademark was unenforceable as, under EU Law, trademarks cannot cover “the shape that gives substantial value to the goods”.   The question, therefore, was whether “shape” includes colour.  The ECJ’s Advocate General Maciej Szpunar has recently delivered his opinion in what has been a blow for Louboutin that shape does, in fact, include colour and therefore Louboutin’s trademark could be ruled to be invalid.  The final decision remains to be seen and may or may not follow Mr Szpunar’s guidance.

This case is not the first to raise the issue of whether a company has sole rights to a colour.  In general colours can be protected using a trademark but companies must Identify the precise colour they wish to protect using a recognised system such as the Pantone colour chart.  The confusion stems from the fact that this issue is dealt with differently around the world.  Louboutin has been successful in trademarking his red sole also known as Pantone 18 1663TP, along with Tiffany and their ‘Robins Egg Blue’ (Pantone 1837) in the USA.   Whereas in the UK although Orange own their orange colour (known as Pantone 151) in the telecommunications sector, Cadbury failed to trademark their distinctive purple for their chocolate bars.

The High Court in the Cadbury case concluded that Cadbury’s trademark was invalid as the wording of the trademark stating that the shade must be the “the predominant colour” was not specific enough, in that it did not clearly identify the percentage of the colour to appear on the brand’s packaging.

Red Bull also failed in their quest to persuade the EU General Court that their trademark for their identifiable blue and silver cans were valid as the wording “the two colours will be applied in equal proportion and juxtaposed to each other” was not precise or uniform enough to be a valid trademark.

In Australia, BP were also unsuccessful in their fight to trademark the colour green on petrol forecourts.  The Trademarks Office held that while motorists would associate the colour green with BP, it was not distinctive enough to be recognised as their trademark.  This was not the case in the UK, where BP had previously been granted the exclusive right to use the particular shade of green on petrol forecourts.

It seems that although it is possible for companies to effectively own a specific colour, unfortunately for Mr Louboutin, each application will be dealt with on its own merits.  Therefore, as long as this issue is dealt with differently in different jurisdictions, trademarking colours will remain a grey area.

If you require any further advice please contact Joanne Shelley, Head of Intellectual Property at Glenville Walker and Partners who will be more than happy to assist.