Position Marks Under EU Trademark Law: The Louboutin Red Sole and the Framework for Unconventional Marks

Position marks — signs defined by their specific placement on a product in proportion to it — are one of the most distinctive categories of “unconventional” trademarks in EU practice. While not formally defined in the EU Trademark Regulation (Reg. 2017/1001), position marks are registrable under EUIPO practice subject to satisfying the same distinctive character requirements as other marks. The 2018 CJEU decision in Christian Louboutin v. Van Haren (C-163/16) provided crucial clarification on the category, holding that the famous red-soled shoe trademark is a position-based figurative mark, not a “shape” subject to the additional exclusion grounds.

For the broader trademark framework, see our coexisting trademarks guide. For the standard distinctiveness test, see our Mr. Kebab vs Mister Kebap case.

The position mark concept

A position mark consists of a sign positioned on a particular part of a product in a constant size or proportion. Unlike pure figurative or shape marks, position marks define both:

• The sign itself (logo, pattern, colour, design element);
• Its specific position on the product.

Position marks are not specifically listed in Article 4 EUTMR, but EUIPO practice treats them as a category subject to the general framework. Filing requires checking “other” in the application and annexing a precise description of how the mark is positioned on the goods.

Registrability and distinctive character

Position marks face the same distinctiveness test as any trademark — they must indicate commercial origin to the relevant consumer. The CJEU has consistently held that consumers do not habitually identify origin from signs indistinguishable from the appearance of the goods themselves. To be distinctive:

• The sign must depart significantly from the norms or customs of the sector;
• The relevant consumer must be able to distinguish the sign from the normal product appearance;
• Mere placement of a non-distinctive element at a specific position does not confer distinctiveness;
• Acquired distinctiveness through use can be demonstrated by intensive marketing and enforcement.

Many position mark applications fail because consumers perceive the element as decorative or functional rather than as a trademark.

Position mark cases

EU case law illustrates the framework with mixed outcomes:

• NAPAPIJRI logo (EUTM 15326325, Class 25): the logo positioned centrally on the front of a winter jacket was accepted. The logo itself is inherently distinctive, and the positioning specification narrows the protection scope appropriately;
• Steiff bear button (EUTM 9439613) and label (EUTM 9439654): the General Court held these devoid of distinctive character. Consumers would perceive the button as decorative and the label as decorative or functional rather than indicators of origin, given common practice in the soft toy sector;
• K-Swiss shoe stripes (IR 932758): registration refused. The stripes extending from the central upper to the sole were considered indistinguishable from the product. Side decoration on shoes is common, and the stripes would be viewed as embellishment rather than origin indicator;
• Shoe Branding Europe parallel stripes (EUTMs 10926764 and 10984102): both applications rejected. The simple geometric patterns positioned on sleeves and pant legs were considered ordinary and not distinguishable from purely decorative patterns common on similar products.

The pattern is clear: simple decorative elements positioned on common product locations rarely qualify as position marks without evidence of acquired distinctiveness.

Louboutin v. Van Haren (C-163/16)

The most consequential position mark decision is Christian Louboutin and Christian Louboutin SAS v. Van Haren Schoenen BV (Case C-163/16, judgment of 12 June 2018). The case concerned Louboutin’s famous red-soled shoes — specifically a precise Pantone red colour applied to the sole of high-heeled women’s shoes (EUTM 8845539). Van Haren had been selling shoes with similarly coloured red soles, and Louboutin sued for trademark infringement in the Netherlands.

The Dutch court referred to the CJEU the question of whether the Louboutin mark was a “shape” trademark — which would engage the exclusion of signs “consisting exclusively of the shape which gives substantial value to the goods” under Article 3(1)(e)(iii) of Directive 2008/95/EC. The CJEU held:

• The Louboutin mark is not a shape mark — it does not seek to protect a specific shape of the sole;
• The mark consists of a specific colour applied to a specific position on the product;
• The exclusion for shape marks “giving substantial value to the goods” therefore does not apply;
• The mark is valid as a position-based figurative mark, with the colour as the distinctive element and the sole as the position;
• The mark’s validity depends on standard distinctiveness and acquired distinctiveness analysis — both of which Louboutin had successfully demonstrated.

The decision was a substantial victory for Louboutin and a clarification of the position mark framework. For luxury brands relying on positioning of distinctive elements (Tiffany blue boxes, Hermès orange, Cartier red, Burberry tartan), the Louboutin framework provides a clear pathway to protection.

How DANDI supports trademark owners

DANDI.media supports Italian and international brand owners on position marks and unconventional trademark categories:

• Position mark filing strategy and description drafting;
• Acquired distinctiveness evidence preparation;
• Defence against opposition and revocation;
• Enforcement against counterfeit and look-alike products;
• Cross-jurisdictional protection coordination.

For consultation, book directly with Avv. Claudia Roggero or Avv. Donato Di Pelino.

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