[Editor's note] After the decision of the European Court of Justice in this case, It has received widespread attention in the European Union. The case was decided against the then relevant European Union regulations on comparative advertising, Clarify and explain hot issues such as trademark infringement and unfair competition, It has an important guiding and forecasting function for similar disputes after that. Therefore, Although the controversy in this case is relatively old, Here we summarize the key rulings in the case, We hope it will be helpful for Chinese customers and partners to understand relevant EU regulations and practices. 　　

[background] 　　

Christian Louboutin The company sued in the Hague Van Haren company, It is believed that the latter violates its registered trademark rights by selling women's high-heeled shoes with red soles in its stores. 　　Christian Louboutin The company has registered a Benelux trademark, The specified commodity class is "High-heeled shoes" , Description of registered trademark: "The logo is made of red color used in the position of the soles as shown (Pantone Color number 18-1663TP) composition (The outline of the shoe is not part of the trademark, It is only used to indicate where the trademark is used) " . Registered trademark (Hereinafter referred to as "Disputed trademark" ) The style is shown in the following figure: 　　In the process of hearing, defendant Van Haren Company argument, The trademark in question is a red two-dimensional graphic trademark, In accordance with "Convention of the Benelux Intellectual Property Union (Trademarks and designs) " The first 2. 1 (2) Provision of article (... A shape produced solely by the nature of the commodity itself, The shape of a commodity that is needed to obtain a technical effect, or the shape that makes a commodity of substantial value, etc, Shall not be used as a trademark) , Should be declared invalid. 　　Accept the court to find out: 　　 (1) The trademark in question is in its registration instructions, It has been clearly stated that it is registered to use a color trademark in a specific location of the goods, The registered protected content does not include an outline of the location used. Therefore, The defendant's defence that the disputed trademark is a two-dimensional planar figure cannot be supported; 　　 (2) Early in 2012 Autumn of the year, The majority of women's high heel products in the Benelux market have been approved "Use a red logo on the sole" This feature identifies the plaintiff's goods, And can be distinguished from similar products of other competitors; 　　 (3) Plaintiff through "Use a red logo on the sole" The goods make great commercial profit, And this feature has become an important reason for consumers to buy plaintiff's goods; 　　 (4) The plaintiff first will "Use a red logo on the soles" This feature as a decorative feature of women's high heel products, after, To be registered as a trademark protection. 　　The trademark in question is a single color trademark specifically designated for use on the sole of high heels, The sole itself is a necessary part of the substantial value of high heel products, The court of hearing the dispute over whether the trademark is used on the goods (High-heeled shoes) A necessary part of (sole) constitute "Directive of the European Parliament and of the Council on the harmonization and harmonization of trademark laws in the Member States (The first 2008/95/EC No) " (Hereinafter referred to as "European Union regulation 2008/95/EC Number instruction" ) The first 3 (1) (e) (iii) prescribed, "A shape that gives material value to a commodity, It shall not be registered as a trademark" The situation of, Be in doubt. specifically, "European Union regulation 2008/95/EC Number instruction" The first 3 (1) (e) (iii) prescribed "shape" This concept, Whether refers only to the outline of the commodity, Dimensional characteristics such as size and volume, Or does it also include non-three-dimensional features like color? 　　 "The first 3 (1) article: The following marks may not be registered as trademarks, registered, Should be declared null and void: " 　　... " 　　 (e) A logo composed entirely of the following elements: " 　　 (i) A shape produced solely by the nature of the commodity itself; " 　　 (ii) The shape of a commodity required to obtain a technical effect; or, " 　　 (iii) A shape that gives material value to a commodity. " 　　In view of this, The hearing court decided to suspend the proceedings, Appeal to the European Court of Justice (Court of Justice) Make a preliminary ruling on the matter. 　　

[conclusion] 　　

The European Court of Justice first noted, "European Union regulation 2008/95/EC Number instruction" Not specified "shape" Concept of, Therefore, The usual meaning of the word in everyday speech should be followed, The context of the provision, And the legislative purpose of the provisions, Define its concept (reference Deckmyn v. s. Vrijheidsfonds case 2014 years 9 month 3 Day control C-201/13 Number judgment, The first 19 Natural segment) : shape, The extent of space defined by a set of lines or Outlines. 　　Therefore, The European Court of Justice stated in its ruling in this case, from "European Union regulation 2008/95/EC Number instruction" Stipulation of, European Court of Justice precedent, and "shape" The usual meaning of this word and so on, A single color without boundary limits shall not be deemed to be "shape" . but, The other problem is, Use a color label in a specific location on the item, Whether belong to "European Union regulation 2008/95/EC Number instruction" The first 3 (1) (e) (iii) As stipulated in the article "shape" ? 　　For that matter, The European Court of Justice stated that, Although the shape of the whole or particular part of the commodity physically constitutes the outline of the color used in that location, However, if the registration explicitly states that no specific shape is required to be protected, Rather, it protects the use of color markers in specific locations for specific goods, so, It cannot be concluded that the physical outline of the particular location constitutes the shape of the color trademark. 　　The European Court of Justice accepted Germany, France, UK and the European Commission, namely, The trademark in question has nothing to do with the specific shape of the heel's sole, Because the trademark clearly states in its description, Shoe contour is not an element of a trademark, It is used only to indicate the location of use of the red mark applied for registration. 　　In any case, Similar to the trademark at issue in this case——The main element is an internationally recognized identification code (Pantone) Specified colors——Mark of, It cannot have a certain shape because of its use position, That the trademark contains the shape element. 　　Based on the above analysis, European court of justice ruling, "European Union regulation 2008/95/EC Number instruction" The first 3 (1) (e) (iii) Article shall be understood as: Such as the trademark at issue in this case, Use color logos on the soles of high heel products, Those that do not fall within the provisions of this Article shall not be registered as trademarks "shape" . 　　

[comment] 　　

The verdict of this case is undoubtedly yes Christian Louboutin The company strives to protect its iconic logo——Red sole——Another victory for us. 　　It is different from the previous practice of strictly restricting the non-traditional trademark registration and attaching additional registration conditions, The European Court of Justice is beginning to accept that a mark may take a form that is unconventional and beyond the scope of the foreseeable. 　　The red color logo is used on the sole position of the heel, A definite association with a particular source of goods has been established in the minds of the vast majority of the consuming public, And for the trademark owner has brought huge commercial profits, Therefore, It is of great significance to protect the trademark rights reasonably. 　　

compile: Liu Dan, Esabarry Legal Counsel　　source: Esabaril (ELZABURU) Intellectual property rights