Opinion of Advocate General Szpunar delivered on 6 February 2018

EU law

4. Article 3 of Directive 2008/95, headed ‘Grounds for refusal or invalidity’, provides:

‘1.

The following shall not be registered or if registered shall be liable to be declared invalid:

…

1. signs which consist exclusively of:

   1. the shape which results from the nature of the goods themselves;

   2. the shape of goods which is necessary to obtain a technical result;

   3. the shape which gives substantial value to the goods;

…’

5. Directive is to be replaced by Directive (EU) 2015/2436,⁽³⁾ the deadline for transposition of which is 14 January 2019. Article 4(1)(e)(iii) of Directive 2015/2436 refers to signs which consist exclusively of ‘the shape, or another characteristic [of the goods] which gives substantial value to the goods’.⁽⁴⁾

The Benelux Convention

6. Trade mark law in the Netherlands is governed by the Benelux convention on intellectual property (trade marks and designs), signed in the Hague on 25 February 2005 by the Kingdom of Belgium, the Grand Duchy of Luxembourg and the Kingdom of the Netherlands (‘the Benelux convention’).

7. Article 2.1 of the Benelux Convention, headed ‘Signs capable of constituting a Benelux trade mark’ provides inter alia that: ‘... Nevertheless, signs consisting exclusively of the shape which results from the nature of the goods themselves, which gives substantial value to the goods, or which is necessary to obtain a technical result shall not be regarded as trade marks’.

8. It is apparent from the order for reference that that convention has not yet been amended so as to transpose Directive 2015/2436.

Preliminary observations

20. Trade mark rights constitute, on the one hand, an indispensable part of the system of competition which EU law seeks to establish and maintain. On the other hand, a registered mark confers on its proprietor an exclusive right, in relation to certain goods and services, that allows him to monopolise the sign registered as a trade mark for an unlimited period.⁽⁵⁾

21. While, generally speaking, these two factors do not conflict, that is not so in relation to signs which are indissociable from the appearance of the goods. The registration of such a sign as a trade mark may limit the ability of other undertakings to bring competing products onto the market.⁽⁶⁾

22. This premiss underlies the specific legislation, contained in Article 3(1)(e) of Directive 2008/95, applicable to signs consisting of the shape of the goods.

23. I observe that these considerations apply equally, mutatis mutandis, in relation to other signs which represent an aspect of the goods in respect of which registration is sought.

24. Thus, the Court has pointed out that signs consisting of colours per se give rise, in principle, to the same objections with regard to the risk of practical characteristics of goods being monopolised. In this regard, the need for a specific approach was recognised in Libertel.⁽⁷⁾

25. These two categories of signs, those consisting of the shape of the goods and those consisting of a colour per se, are subject to specific provision within the scheme of Directive 2008/95, as interpreted by the Court. It is therefore necessary, before the referring court’s question can be answered, to determine which of those two categories the contested sign belongs to.

26. More generally, the present case demonstrates that considerations relating to the risk of monopolisation of essential characteristics of the goods in question may apply to other types of trade mark — such as position⁽⁸⁾ or motion⁽⁹⁾ marks as well as, potentially, sound, olfactory or taste marks — which may also be indissociable from an aspect of the goods in question. Regardless of how such marks are classified, it is important that the interest in keeping certain signs in the public domain can be taken into account when they are examined with a view to registration.

27. In this regard, there is more than one interpretive approach open to the Court. Article 3(1)(iii)(e) of Directive 2008/95 could be interpreted more broadly, as I suggest later in this Opinion. Alternatively, the Court could hold that it is possible to take account of the interest in keeping certain signs within the public domain, in considering whether a sign has distinctive character within the meaning of Article 3(1)(b) of that directive, in relation to all signs which are indissociable from an aspect of the goods in question, or indeed in relation to other categories of signs with limited availability.⁽¹⁰⁾

Classification of the contested mark

28. I consider that the starting point for analysis of the request for a preliminary ruling is the classification of the contested mark with regard, first, to the category of signs referred to in Article 3(1)(e) of Directive 2008/95, and secondly to that referred to in the judgment in Libertel.⁽¹¹⁾

29. The referring court observes that the contested mark, consisting of the red colour of the sole of a shoe, is indissociable from an aspect of the goods in question, but hesitates to describe that aspect as the ‘shape’ of the product.

30. The positions of the parties to the main proceedings and of the four intervening Member States diverge on this point. Louboutin submits amongst other things that the concept of a sign consisting ‘exclusively’ of the shape of the product does not embrace position marks, such as its red sole mark, which do not consist of a certain model of goods, but can be applied to different models. Van Haren submits, on the other hand, that the colour can be regarded as being an integral part of the shape of goods, as it is in the case of the contested mark. The Commission observes that it is not inconceivable that a sign consisting of the shape of a product may also have a colour, but that in the present context, the colour in itself is perceived as an independent element from the goods, and therefore as independent from the shape of the goods. It states, accordingly, that its observations relate to a colour per se.

31. In this regard, I note that the classification of the contested mark is a factual assessment to be made, in the present case, by the referring court. That consideration does not prevent the Court of Justice from making remarks which may guide that court in making its assessment.

32. Although several parties have described the mark at issue as a ‘position mark’, I note that Directive 2008/95 and the case-law of the Court do not attach any legal consequences to that classification. Furthermore, the classification of a mark as a ‘position mark’ does not, of itself, prevent that same mark from consisting of the shape of the goods, given that the latter category also embraces signs representing a part or an element of the goods in question.

33. Thus, in my view, it is for the referring court to determine whether the mark at issue in the present case is a per se colour mark or a mark consisting of the shape of the goods, but also seeking protection for a colour.

34. For the purposes of that determination, the referring court should carry out an overall assessment, taking into account the graphic representation and any descriptions filed at the time of application for registration, as well as other material relevant to identifying the essential characteristics of the contested mark, where applicable.⁽¹²⁾

35. The first observation to make is that the fact of the contested mark having been registered as a figurative mark does not prevent it being classified as a ‘mark consisting of the shape of the goods’.⁽¹³⁾

36. On the other hand, it is necessary to consider whether the mark at issue seeks protection for a certain colour per se, not spatially delimited,⁽¹⁴⁾ or whether, on the contrary, such protection is sought in conjunction with other characteristics relating to the shape of the goods.

37. In this regard, while the colour is applied to a well-defined part of the goods, I do not think it is impossible to take the view that the mark is spatially delimited, such that the colour is indissociable from a specific element of the goods.

38. The fact that the proprietor of the mark does not claim protection for the contours of the goods, but leaves himself free to change them from model to model, is not necessarily decisive. For one thing, the contours may not be an essential characteristic of the sign in any event. Rather, what must be determined is whether the sign derives its distinctive character from the colour in respect of which protection is sought per se, or from the exact positioning of that colour in relation to other elements of the shape of the goods.

39. While it will ultimately be for the referring court to apply those considerations, I note that several factual matters which are apparent from the order for reference point to the conclusion that, for the purposes of analysing its potentially functional aspects, the mark at issue is better conceptualised as a mark consisting of the shape of the goods and seeking to protect a certain colour in relation to that shape.

40. While the contested mark seeks protection for a certain colour, that protection is not sought in the abstract, but for use on the sole of a high-heeled shoe, as represented. The mark does not relate to the shape of a shoe per se, but certain aspects of that shape, namely those which enable us to recognise it as high-heeled women’s shoe, appear to be part of the mark. It is apparent from the representation of the mark that the colour is applied to the entirety of the sole, whatever its precise contours may be. The contours of the sole appear in any event to be a negligible element of the mark, which derives its distinctive character from the unusual positioning of the coloured element and, potentially, the colour contrast between different parts of the shoe.

41. In conclusion, I consider that it is necessary, in examining the essential characteristics of the contested mark, to take into account the colour as well as the other aspects of the goods in question. The mark should therefore be equated with one consisting of the shape of the goods and seeking protection for a colour in relation to that shape, rather than one consisting of a colour per se.

42. Nonetheless, in order to answer the referred question fully, I will consider both possibilities.

Applicability of Article 3(1)(e) of Directive 2008/95 to marks consisting of a colour per se

43. The Court has taken account of the particular nature of colour marks in the Libertel line of case-law.⁽¹⁵⁾

44. Under that case-law, save in exceptional circumstances, particularly on very specific markets, colours do not have distinctive character ab initio, but may potentially acquire distinctive character following use in relation to the goods or services claimed.⁽¹⁶⁾

45. Furthermore, in analysing the distinctive character of a sign consisting of a colour per se, it is necessary to assess whether the registration of that sign would run counter to the general interest in not unduly restricting the availability of colours for the other operators who offer for sale goods or services of the same type.⁽¹⁷⁾

46. It is apparent from that case-law, on the one hand, that signs consisting of a colour per se do not fall within Article 3(1)(e) of Directive 2008/95, and may therefore acquire distinctive character though the use which is made of them, but on the other hand, that in relation to signs which are indissociable from the appearance of the goods, registration must be considered in the light of the same factors as underpin that provision.⁽¹⁸⁾

47. Thus, in establishing that requirement for per se colour marks, the judgment in Libertel⁽¹⁹⁾ was essentially taking into account the same objective as underpins Article 3(1)(e) of Directive 2008/95.

48. It nevertheless remains the case that, if the contested mark were to be classified as a ‘mark consisting of a colour per se’, it would be appropriate to hold that it did not fall within the scope of Article 3(1)(e) of Directive 2008/95.

Applicability of Article 3(1)(e) of Directive 2008/95 to signs consisting of the shape of the goods and of a certain colour

49. I should now consider whether Article 3(1)(e) of Directive 2008/95 applies to signs consisting of the shape of the goods and seeking protection for a colour in relation to that shape.

50. The parties to the main proceedings are divided on this point,⁽²⁰⁾ as are the four intervening Member States.⁽²¹⁾ The Commission appears to begin from the premiss that, in the present case, colour should be regarded as an aspect independent of the shape of the goods.

51. The referring court states that the answer cannot be deduced from the wording of the provision, but that the exclusion of three-dimensional colour signs from its scope would conflict with its underlying objective, as certain signs may incorporate functional characteristics linked to both shape and colour, as in the case of a sign representing a safety jacket, a fire extinguisher or thermo-reflective goods. The referring court therefore raises the question of whether, in analysing this type of sign from the point of view of the prohibition on functional signs, it is also appropriate to take colour into account.

52. I observe that the answer to be given to this question must take account of the logic and scheme of Article 3(1)(e) of Directive 2008/95.

53. It is settled case-law that the objective pursued by that provision is to prevent trade mark protection from granting its proprietor a monopoly on technical solutions or functional characteristics of a product which a user is likely to seek in the products of competitors.⁽²²⁾ The provision enables those essential characteristics of the goods in question which are reflected in its shape to be kept in the public domain.

54. I consider that the presence of a colour applied to an element of the surface of the goods can be regarded as a characteristic reflected in the shape of the goods. Furthermore, as the examples given by the referring court demonstrate, colour can be an essential practical characteristic of certain goods, such that the monopolisation of colour, in relation to an element of the shape of the goods, would remove the freedom of competitors to offer goods incorporating the same functionality.

55. Accordingly, if signs consisting of both the shape and the colour of the goods could not be examined from the point of view of their functionality, the general interest underpinning Article 3(1)(e) of Directive 2008/95 would not be fully served.

56. The judgment in Libertel⁽²³⁾ enables that general interest to be taken into account only in relation to signs consisting of a colour per se,⁽²⁴⁾ not in relation to signs combining colour with aspects of shape.

57. In the context of pure colour marks, which the Court considered in that judgment, colour is an aspect independent of the shape of the goods. It is otherwise in relation to signs in which the colour is applied to a specific part of the goods. In the analysis of such signs, the functionality of the colour may emerge from its positioning on the goods, such that it is essential that the two aspects — shape and colour — can be examined together.

58. Accordingly, in my view, signs in which colours are integrated into the shape of the goods must be subject to the functional analysis provided for by Article 3(1)(e) of Directive 2008/95.

59. Furthermore, that approach is in line with the principle that the assessment of a sign must be based on the overall impression it produces, as a mark must be considered as a whole. It is settled case-law that the correct application of Article 3(1)(e) Directive 2008/95 requires that all of the essential characteristics of the sign at issue be properly identified, on the basis of the overall impression produced by that sign.⁽²⁵⁾

60. It is important to bear in mind in this regard that, according to settled case-law, the grounds for refusal contained in Article 3(1)(e) of Directive 2008/95 do not prevent the registration of a sign which, although consisting of a shape of goods, also incorporates a significant non-functional element.⁽²⁶⁾ Thus, in my opinion, the question of whether or not, in a shape and colour mark, colour is a functional element, must be considered as part of the overall assessment of the sign, from the point of view of Article 3(1)(e) of Directive 2008/95. Furthermore, it is apparent from that case-law that, conversely, the provision in question applies to a shape of goods which incorporates another element where that element is functional.

61. Finally, from a contextual perspective, this approach seems to me to be supported by the adoption of Directive 2015/2436, Article 4(1)(e) of which refers to ‘the shape, or another characteristic [of the goods]’.

62. This reference to ‘another characteristic [of the goods]’ takes account of the fact that Directive 2015/2436, in permitting marks to be represented in any appropriate form using generally available technology,⁽²⁷⁾ opens the way for registration of new types of mark which may also give rise to questions as to whether they are functional in nature, such as sound marks and, potentially, olfactory or taste marks.

63. However, as regards signs consisting of the shape and colour of the goods, which may be registered under both the old and the new regime, the addition of the reference to ‘another characteristic [of the goods]’ can be interpreted in two ways: it can be understood as changing the law applicable to such signs, or simply as clarifying it.

64. If such signs were to be regarded as not being covered by Article 3(1)(e) of Directive 2008/95, but as being covered by the corresponding provisions of the new Directive 2015/2436, that interpretation would necessitate the adoption of transitional provisions, so as to protect the legitimate expectations of proprietors of marks registered under the current legislation.⁽²⁸⁾ The fact that legislature did not find it necessary to lay down any transitional provisions may indicate that it considered the law relating to such signs to be the same under both of the successive directives.

65. Having regard to all of those observations, I consider that Article 3(1)(e) of Directive 2008/95 does potentially apply to signs consisting of the shape of the goods which seek protection for a certain colour.

66. If the referring court were to conclude — as I suggest above⁽²⁹⁾ — that the mark at issue should be regarded as sign of that type, combining colour and shape, the mark would potentially be caught by the prohibition contained in Article 3(1)(e)(iii) of Directive 2008/95.

The interpretation of ‘shape which gives substantial value to the goods’

67. For the sake of completeness — this matter not being expressly raised by the request for a preliminary ruling — I will set out the circumstances in which the absolute ground for refusal contained in Article 3(1)(e)(iii) of Directive 2008/95, relating to a shape which ‘gives substantial value’ to the goods, applies.

68. The Court has already held that that provision is not limited to the shape of goods having only artistic or ornamental value, but also applies to signs relating to goods which, besides their aesthetic function, also have other essential functions.⁽³⁰⁾

69. The application of the ground in question is based on an objective analysis, the purpose of which is to show that the aesthetic characteristics of the shape at issue affect the attractiveness of the goods to such an extent that the reservation thereof to a single undertaking would distort competition on the market concerned. The consumer’s perception of the shape concerned is not the decisive criterion in that analysis, which potentially includes a range of factual matters.⁽³¹⁾

70. Furthermore, the analysis relates exclusively to the intrinsic value of the shape, and must take no account of attractiveness of the goods flowing from the reputation of the mark or its proprietor.⁽³²⁾

71. It must be borne in mind that the provision in question is designed to prevent the monopolisation of external features of goods which are essential to their market success, and thus to prevent the protection conferred by the mark being used to gain an unfair advantage; that is, an advantage which does not result from competition based on price and quality.⁽³³⁾

72. On the other hand, the application of the provision is not justified where the advantage does not result from the intrinsic characteristics of the shape, but from the reputation of the mark or its proprietor. Indeed, the possibility of acquiring such a reputation is an important aspect of the system of competition which trade mark law helps to maintain.