Louboutin: the protection of position marks by the Paris Court of Appeal.

The case (June 12, 2018 C-163/16) opposing Christian Louboutin to Van Haren, judged by the Court of Justice of the European Union in 2018, marked a decisive advance in the recognition of position marks, by validating the possibility of protecting the red sole of Louboutin's high-heeled shoes.

More recently, the Paris Court of Appeal, in a decision rendered on September 18, 2024, confirmed and extended this protection by considering that a partially red sole could also constitute an infringement of the Louboutin trademark.

This reasoning is based on the notion of the overall impression perceived by the consumer, as well as on the well-known mark status attributed to Louboutin.

I. The CJEU judgment of June 12, 2018: Recognition of the position mark.

The case of June 12, 2018 C-163/16 (Louboutin and Christian Louboutin) before the CJEU pitted Christian Louboutin and his company against Van Haren Schoenen BV, a Dutch retailer that marketed high-heeled shoes with red-covered soles.

Louboutin claimed protection for his figurative mark, registered in the Benelux, which is defined as follows:

\" _The mark consists of the color red applied to the sole of a shoe. The contour of the shoe does not form part of the mark but serves to define the positioning of the mark_\".

Van Haren challenged the validity of this mark by invoking Article 3, paragraph 1, point (e)(iii), of Directive 2008/95/EC, which prohibits the registration of signs consisting exclusively of the shape which gives substantial value to the goods.

The District Court of The Hague referred the matter to the CJEU to determine whether a color applied to a part of a product could be considered a \" _shape_\" within the meaning of trademark law.

In its judgment of June 12, 2018, the CJEU rejected the argument that the red sole constituted a shape and confirmed that Louboutin's mark could fall into the category of position marks, as subsequently defined by the \" _Trademark Package_\".

- The registration of Louboutin's mark did not concern the shape of the sole itself, but the application of the color red. - A color applied to a specific part of a product can be perceived as a distinctive sign allowing the identification of the origin of the products.

II. The Paris Court of Appeal judgment of September 18, 2024: an extension of protection.

The case examined by the Paris Court of Appeal \\ [1\\] concerned the marketing by a company of high-heeled shoes with partially red soles.

The argument put forward by the defense was that this partial modification of the sole made it possible to avoid any confusion with the Louboutin brand.

Louboutin, however, argued that this variation was insufficient to prevent association in the consumer's mind.

The question put to the Court of Appeal was therefore whether a partial red sole could constitute an infringement of the protected position mark.

The Paris Court of Appeal ruled in favor of Louboutin, based on two essential elements:

- The principle of overall impression: even if part of the sole was not red, the consumer instinctively associated the appearance of the shoes with the Louboutin brand. - The status of a well-known mark: the court recognized that Louboutin's red sole benefited from strong notoriety in the market (significant communication investments in particular), which confers enhanced protection against any attempt to exploit its image.

The attribution of well-known mark status to Louboutin is a key element in this case, as a well-known mark benefits from protection beyond the principle of specialty.

In other words, it can be protected against uses that are not strictly identical but create a link with the protected mark.

The court thus ruled that the marketing of a partially red sole infringed Louboutin's reputation and that this practice constituted trademark counterfeiting.

Conclusions.

This decision reinforces the idea that the protection of a position mark does not only rely on identical reproduction, but also on consumer perception and association with a specific brand.

By recognizing that Louboutin's red sole constitutes a well-known mark, the Paris Court of Appeal further expands the protection offered to it by the CJEU regarding its \" _red sole_\" position marks.

This decision is part of a jurisprudential trend aimed at protecting iconic brands against any attempt to exploit their notoriety.