Fashion designer Christian Louboutin’s attempt to register his iconic red soles as a trademark for high-heeled shoes may run afoul of European Union restrictions on registering some shapes, an adviser to the EU’s highest court said Feb. 6.

The decision may affect the fate of Louboutin’s trademark registration in Benelux, the political union of Belgium, the Netherlands, and Luxembourg, and the interpretation of EU-wide law on protection for potentially functional trademarks.

A Court of Justice of the European Union advocate general pointed to a EU prohibition against trademark registrations for shapes that give “substantial value” to the goods, which comes from Article 3(1)(e)(iii) of the directive on trademarks. That prohibition could apply to Louboutin’s registration, which consists of the shape of a high-heeled shoe’s sole in a particular color, Advocate General Maciej Szpunar said.

The red color alone likely wouldn’t be able to act as a trademark in and of itself, though Louboutin is not seeking such a registration, Szpunar said.

Shapes with Intrinsic Value

The EU case came from the Dutch court handling the trademark dispute between Louboutin and retailer Van Haren Schoenen BV, which was selling high-heeled shoes with red soles. The Dutch court referred the case to the CJEU for an interpretation of EU law.

The Dutch court will have to make the final determination, because the question of whether the Louboutin registration is prohibited depends on certain facts, Szpunar said.

The advocate general laid out several guidelines for determining whether a shape has substantial value. The prohibition against trademark registrations for shapes that have substantial value is to protect competition by ensuring that no one can monopolize the inherent shapes of certain products, Szpunar said.

Public perception is a factor, because whether something has substantial value in the marketplace is determined by the public, Szpunar said. However, the prohibition doesn’t apply if the shape’s value comes from the public’s association of that shape with a particular company or proprietor, Szpunar said. Instead, it is only when the trademark has substantial value coming from the intrinsic value of the shape, he said.

Szpunar issued an earlier advisory opinion in the dispute in June 2017, but before the CJEU made a decision, it reassigned the case to a larger panel of judges and reopened oral arguments. He came to largely the same conclusion in the new opinion, which addresses some points raised during the second round of oral arguments.

Advocate general opinions have influence on final CJEU rulings, with some studies showing that the two arrive at the same conclusion about 80 percent of the time.

The case is Louboutin v. Van Haren Schoenen BV, E.C.J., Case C‑163/16, advocate general opinion 2/6/18.