The positional mark: from red soles to yellow stitching on shoes

A positional mark is a special type of trade mark because it is always linked to a product. It consists of a distinctive sign – for example, a colour, stitching or label – which is affixed to a fixed position on a product. It is not the product itself that is protected, but the combination of that sign and its fixed position on the (unclaimed) product. For example, the red colour on the outsole of a high-heeled shoe.

This relationship between the claimed mark and the unclaimed goods raises specific questions, which have been the subject of numerous legal proceedings in recent years. Both Louboutin and Airwair invoked a positional mark against the footwear chain Van Haren, which consistently argued that these marks were invalid.

Louboutin’s positional mark

Louboutin designs women’s high-heeled shoes, a distinctive feature of which is a red outsole. Louboutin registered this feature as a trade mark in the Benelux in 2009 and in the EU in 2010. This does not cover the entire shoe, but rather the red colour in one specific place: the outsole of a high-heeled shoe.

The dispute with Van Haren: can a red sole really be a trade mark?

In 2012, Van Haren sold women’s high-heeled shoes with a red sole that were not manufactured by Louboutin. Louboutin regarded this as trade mark infringement and took the matter to court.

Van Haren defended itself by arguing that the trade mark was invalid. It invoked the ground for exclusion under trade mark law, which states that signs consisting exclusively of the shape that confers substantial value on the goods cannot be registered as a trade mark. According to Van Haren, the red sole was not a trade mark, but an attractive feature of the shoe’s design: a product characteristic that should not be monopolised by a single party through trade mark law.

The ruling of the CJEU

On 12 June 2018, the Court of Justice of the European Union ruled that, in this case, Louboutin could indeed claim trademark rights to the red outsole. The decisive factor was that Louboutin did not claim the shape of the sole as such: the shape merely indicated where the red colour was applied. What is protected, therefore, is the combination of the red colour and its fixed position on the sole, not the shape of the sole itself. Consequently, the trade mark does not fall under the ground for exclusion relating to shapes that determine the essential character of a product.

Other shoe designers remain free to design all manner of sole and shoe shapes. What they are not permitted to do is use a red outsole on high-heeled shoes.

Amendment to the trade mark rules

Since this ruling, the European trade mark rules have been amended. The ground for exclusion has been broadened: not only the shape of a product, but also ‘any other feature’ cannot be protected as a trade mark if that feature determines the essential value of the product.

Under the new rule, Louboutin’s red sole could be regarded as such an ‘other characteristic’. The question then is whether the sole determines the intrinsic value of the shoe, or whether that value stems rather from the material and Louboutin’s reputation. The European Trade Mark Office ruled that the red sole does not determine that value, meaning the trade mark is likely to stand up even under the new rules. It is important to note, however, that these revised trade mark rules do not apply to Louboutin: the trade mark was already registered under the old regime and the new rules do not apply retrospectively.

Distinctiveness of position marks

Just like any other trade mark, a position mark must also possess distinctive character in order to be registered and enforced. The relevant public must therefore recognise the sign as an indication of the product’s commercial origin.

For position marks consisting of a colour, stitching or other design element in a fixed position, it is generally difficult to demonstrate inherent distinctive character. Consumers are not accustomed to interpreting such features as an indication of origin; they tend to view them as a functional or decorative part of the product. It is only through prolonged and intensive use that such a sign can become so established that the public recognises it as a mark of origin: this is known as ‘establishment’. Many position marks are therefore only registered on that basis.

The dispute between Airwair and Van Haren

AirWair, the company behind the Dr Martens brand, holds a Benelux position mark for the yellow welt stitching along the edge of the sole of boots. When Van Haren sold boots with similar yellow stitching, AirWair initiated infringement proceedings.

The outstanding legal question regarding the integration of the feature

The yellow stitching may be regarded as an ‘other feature’ within the meaning of the ground for exclusion. However, the Court of Appeal in The Hague ruled that it does not confer any intrinsic value on the goods: that value lies in the goodwill and reputation of the brand, and not in the yellow stitching.

In the dispute between AirWair and Van Haren, another question of principle has arisen, which is now before the First Chamber of the Benelux Court of Justice: may the colour of the unclaimed goods – in this case, the boots – be taken into account when assessing integration?

The reason for this is that, in practice, AirWair applies its position mark almost exclusively to dark-coloured boots. The Second Chamber of the Benelux Court of Justice ruled that the unclaimed goods encompass all likely forms of the product. When assessed against that standard, AirWair has indeed demonstrated established use for dark-coloured boots, but not for light-coloured ones. Consequently, established use for the goods ‘boots’ as a whole has not been proven and the trade mark is invalid.

The First Chamber must now determine whether that broad interpretation is correct, or whether the product colour should be disregarded.

Any questions?

Do you have any questions regarding this article, or would you like to know whether you can take action yourself regarding your trade mark? If so, please contact our solicitors in good time. We would be happy to assist you in assessing your position, preparing a defence or lodging a complaint.