(CN) – Stomping on Christian Louboutin’s trademark for red-soled shoes, an EU magistrate focused Tuesday on a law that excludes shapes from protection.
Louboutin brought the underlying challenge in the Netherlands where a retailer called Van Haren was selling high-heeled women’s shoes with red soles.
When Van Haren sought in turn to invalidate Louboutin’s mark, the case went to the European Court of Justice in Luxembourg for clarification of EU law.
Advocate General Maciej Szpunar delivered his second opinion on the case Tuesday, focusing on EU law that says a trademark can be refused or invalidated “where its characteristics give substantial value to the goods.”
Here, Szpunar concluded, “it is necessary to assess whether the registration of that sign would run counter to the general interest that the availability of the characteristics represented by that sign should not be unduly restricted for other operators offering for sale goods or services of the same type.”
Szpunar also tackled the issue of whether a law that bans the protection of shapes prevents the misuse of trademarks that may lead to the creation of anticompetitive monopolies.
Louboutin argued to this point “that, within the aesthetic field, there is no need to keep the essential characteristics of goods available on a lasting basis under trademark law because such characteristics do not have a sufficiently long economic lifetime to justify such protection,” Szpunar recapped.
“I am sympathetic to the view put forward at the hearing by Louboutin and the German government that the appeal of aesthetic characteristics has its own dynamic, and that the characteristics sought and valued by the public may vary in line with fashion trends,” he wrote.
Focusing his attention on the fact that Louboutin’s mark combines color and shape, however, Szpunar said “the concept of a shape which ‘gives substantial value’ to the goods, within the meaning of that provision, 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.”
Szpunar’s opinion is not binding on the European Court of Justice, which will now begin its own deliberations in the case.