Louboutin cannot benefit from the introduction of the 'position' mark into EU law

(Courtesy of Margot van Gerwen, Maarten Rijks and Eelco Bergsma, TaylorWessing and Jesse Hofhuis, Hofhuis Alkema Groen)

Case C-163/16 Louboutin v Van Haren. Opinion A-G Szpunar.

Trade mark law. Additional opinion following the reopened oral hearing in case Louboutin v van Haren. A reopening was called for after questions were raised by the Ninth Chamber about EU trade mark law.

From the press release: "In his additional Opinion following the reopening of the oral procedure,2 Advocate General Maciej Szpunar maintains his view that the prohibition set out in the trade mark directive is capable of applying to a sign combining colour and shape. Accordingly, he proposes that the Court’s answer should be that the grounds on which registration of a mark may be refused or declared invalid are capable of being applied to a sign consisting of the shape of the goods, and seeking protection for a certain colour.

The Advocate General also considers that the introduction of the concept of a ‘position’ mark into EU law (see Article 3 EU Trade Mark Implementing Regulation) is not liable to qualify his considerations concerning the applicability of the ground for refusal or invalidity (laid down in the EU trade mark directive) to a sign such as that at issue.

The A-G takes the view that the reasons for the amendments introduced by the new directive (strengthening the trade mark proprietor’s monopoly and restricting third party rights) cannot easily be applied to the grounds for refusal or invalidity.

With regard to the classification of the mark, the Advocate General points out that it is to be assessed whether the registration of that sign would not run counter to the general interest in not unduly restricting the availability of the characteristics represented by that sign for other operators offering for sale goods or services of the same type."

Read the opinion here.

Read the press release here.