The Authors' Take - Louboutin v Van Haren

AG Szpunar’s position on Louboutin’s red sole mark: 
a shoo-in for a shape mark


Queen Mary, University of London


Is Louboutin’s red sole mark (shown below) a position mark, a colour mark or a shape mark?


Louboutin sued Dutch footwear retailer, Van Haren, for infringing the Benelux registration of its red sole mark by selling high-heeled women’s shoes with red soles.  In response, Van Haren contended the red sole mark was invalid since it was a 2D mark in which the colour red, when applied to the soles of shoes, conformed to the shape of the shoes, thereby giving them substantial value.     

The District Court of The Hague, Netherlands is now seeking guidance from the Court of Justice of the European Union (CJEU) on whether the notion of ‘shape’ pursuant to the absolute ground for refusal or invalidity under Article 3(1)(e)(iii) of the Trade Mark Directive (2008/95/EC), which concerns signs consisting exclusively of the shape which gives substantial value to the goods, includes non-3D properties of the goods such as their colour.

According to the AG, Louboutin’s red sole mark is neither a position mark nor a colour mark but a shape mark, specifically “a mark consisting of the shape of the goods and seeking protection for a colour in relation to that shape.”  Accordingly, Louboutin’s red sole mark potentially falls within the prohibition under Article 3(1)(e)(iii).  However, as the AG pointed out, the concept of shape which “gives substantial value” relates only to the intrinsic value of the shape and not to the reputation of the mark or its owner.
To overcome the prohibition under Article 3(1)(e)(iii), Louboutin will need to prove that the attractiveness of its red-soled high heels arises from the reputation of its red sole mark or as the owner of that mark and not from the intrinsic value of the shape.  On the face of it, that should not be too difficult since it is because consumers are head over heels for Louboutin’s red-soled high heels that competitors have created their own copycat versions.
Let’s however wait to hear what the CJEU says.

[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP).]

The Authors' Take - Stella McCartney v IMAX Srl

The protection of the ‘eco-friendly’ Falabella bag by Stella McCartney in a recent decision of the Court of First Instance of Milan


by Mario Pozzi

Roedl&Partner Law Firm, Milan – Italy


On 9 March 2017, the Court of First Instance of Milan granted protection to the Falabella Bag by Stella McCartney (Tribunale di Milano, Stella McCartney Ltd v IMAX Srl, Decision No 2790/2017). A competitor, Imax S.r.l., was found to have infringed the Community designs and trade marks owned by Stella McCartney Ltd. 

The Milan court first ascertained the validity of the designs and trade marks owned by Stella McCartney (in terms of novelty, individual character, distinctive character) and then declared Imax’s conduct infringing of the rights in the Falabella bag (thus ascertaining the likelihood of confusion risk). The bag marketed by Imax was very similar to Falabella, in that it replicated all its main characteristics (shape, chain with a faceted shape that follows the whole edge of the bag fixed to the bag with a visible stitching). In particular, the court considered that the fact that the materials of the bags were different was not sufficient in order to avoid a finding of infringement. 

For these reasons, the Court of First Instance of Milan ordered the withdrawal of the infringing bags from the market as well as prohibiting any repetition of the unlawful activity. 

As far as damages are concerned, the court awarded a sum of €80.000,00 calculated on the basis of the advantages obtained by the infringer. Moreover, the court awarded Stella McCartney moral damages. According to the court, the fact that Imax S.r.l. produced the infringing bags with leather was capable of causing a damage to Stella McCartney’s eco-friendly brand image.

Italian court have become more sophisticated and severe in assessing infringing activities. The “new” trend to compensate also moral damages is such as to grant IP owners, especially those operating in the field of fashion, greater protection and confidence in starting proceedings for the protection of their rights. Overall, decisions like the Falabella one could represent a good deterrent for wannabe infringers.


[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP).]

The Authors' Take - Stichting Brein v Jack Frederik Wullems (Filmspeler)

CJEU applies right of communication to the public to sale of multimedia players

by Karin Cederlund and Nedim Malovic

Sandart&Partners AdvokatbyrÄ KB


In a 2017 decision (Case C‑527/15, Stichting Brein v Jack Frederik Wullems (Filmspeler)), the Court of Justice of the European Union (CJEU) held that the sale of a multimedia player, with pre-loaded hyperlinks to pirate websites, constitutes a communication to the public, within the meaning of Article 3(1) of Directive 2001/29/EC (InfoSoc Directive). The CJEU also excluded that consumers’ streaming from illegal sources would be exempted from the reproduction right under Article 5(1) of the InfoSoc Directive (temporary copies exemption).

Communication to the public

The CJEU referred to its previous case law and held that an act of communication to the public under Article 3(1) of the InfoSoc Directive requires the fulfillment of two conditions: (1) an 'act of communication' (2) directed to a 'public'. The CJEU concluded that the sale of the multimedia player at issue must be considered as a ‘communication’. The communication would encompass all persons purchasing the media player and having an internet connection. According to the CJEU, those persons could access the protected works at the same time, by streaming the works on the internet. Hence, the communication would be aimed at an indeterminate number of potential recipients and involve a large number of persons. It would be therefore a communication to a ‘public’ within the meaning of Article 3(1) of the InfoSoc Directive.

When assessing whether the works are communicated to a ‘new’ public, the CJEU recalled the presumption adopted in Case C-160/15GS Media, i.e. the user/defendant’s profit making intention. The court noted that multimedia players were supplied with a view to generate a profit, the price for the players being paid to obtain direct access to protected works available on streaming websites without the consent of the copyright holder. Hence, the provider of the device must be presumed to have knowledge of the unlicensed character of the works accessed this way.

Temporary copies exception under Article 5(1) of the InfoSoc Directive

Among the conditions of this exemption there is that the sole purpose of the act of reproduction is to enable transmission in a network between third parties by an intermediary or a lawful use of a protected work. 

According to the CJEU, the reproduction acts at issue (streaming by users of the multimedia player) would not seek to enable transmission in a network, nor the lawful use of a work. Hence, unlicensed streaming of copyright content could not fall within the scope of Article 5(1). Holding otherwise would also conflict with the three-step test in Article 5(5) of the InfoSoc Directive. 


[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP).]

The Authors' Take - find out what JIPLP authors are writing about!

In the fast-moving world of intellectual property law, JIPLP has always sought to guarantee not only the highest quality of legal analysis (for which we are indebted to dedicated, enthusiastic and passionate authors and reviewers), but also the most timely publication, to ensure that readers can access the most up-to-date and relevant scholarship. Our reviewers normally complete their reviews within 2 weeks and the articles are then edited and sent into production within a short period of time, thus resulting in a production cycle that rarely exceeds 6 - 9 weeks from final acceptance to advance online publication (inclusion in a paper issue may require an additional period of time, as issues are planned months ahead). We are extremely proud of these results and a great thank you goes to everyone involved in JIPLP, from our authors and reviewers, to our commissioning editor, Sarah Harris, and the entire team at OUP, led by Guy Edwards.

To give readers a chance to find out what our authors are writing about, even before their works are published in JIPLP, we are starting a new section on this blog - "The Authors' Take". In this section, selected authors of accepted pieces (articles and Current Intelligence notes) will share some preliminary thoughts and comments with our readers, providing a "sneak peek" into their work and analysis. Through these new and original contributions, we hope to give an even more timely overview of the latest IP scholarship and to allow readers and authors to connect more directly. As always, we welcome your feedback and suggestions on how we can improve or build upon this initiative.

On behalf of our editorial team, a heartfelt thank you to all the authors that will be involved in this series.