Christian Louboutin (Louboutin) has again been successful in a long running opposition proceeding filed by Roland SE (Roland) against its red sole trade mark in the European Union.
Louboutin has faced legal challenges around the world in registering and enforcing its signature red sole on its shoes. In 2010, Louboutin filed a Community Trade Mark application for the below trade mark in class 25 for “high-heeled shoes (except orthopaedic footwear)” (Louboutin Mark):
The Louboutin Mark was described as consisting of the colour red (Pantone 18.1663TP) applied to the sole of a shoe as represented in the mark. The outline of the shoe shown in broken lines does not form part of the Louboutin Mark but rather is designed to show how the mark is applied to the shoe.
While the examiner initially rejected the application, an appeal to Office for Harmonization in the Internal Market (OHIM) reversed the examiner’s decision and saw the Louboutin Mark accepted for registration. Following publication, three companies opposed the registration of the Louboutin Mark, including Roland, which opposed the mark on the basis of its prior filed Community Trade Mark registered in class 25 for “clothing, footwear, headgear”, depicted below:
Roland was unsuccessful in its opposition against the Louboutin Mark both in the first instance and on appeal to OHIM. As the trade marks differed on a visual, phonetic and conceptual basis, the opposition failed notwithstanding that the marks were filed for identical goods.
Roland subsequently appealed to the Court of Justice of the European Union (Court) and in a judgment handed down this month, was again unsuccessful in its opposition against the Louboutin Mark.
The Court held that, taking into account all relevant factors, including the similarities of the signs and the goods claimed in the applications, there was no risk of any consumer confusion arising that the public would associate the goods sold under the Louboutin Mark as emanating from Roland or that there existed an association with Roland.
When considered as a whole, the visual impression generated by the Louboutin Mark was that of the colour red applied to the sole of a shoe with a high heel. In contrast, the impression of the Roland Mark was of a banal graphic box containing the words “my shoes” which were descriptive of the goods claimed in the registration. The colour red was not held to be a dominant feature in the Roland Mark as it was present only in the box containing the word “shoes” and was a decorative feature that had a secondary importance to the words “my shoes”, which were considered to be the dominant part of the Roland Mark. The Court therefore held that there was no visual similarity between the two marks.
The Court also held that there was no phonetic similarity between the two marks, given that the Louboutin Mark was a figurative mark containing no words and the Roland Mark contained the words “my shoes”.
Finally, the Court held that there was no conceptual link between a mark which depicted the red sole of a shoe with a high heel and a mark containing a red rectangle bearing the word “shoes”. Roland argued that the marks introduced a link with the word “shoes” and the common colour red, however, the Court held that there was an insufficient conceptual link between the marks.
The Court rejected the appeal on all grounds and ordered Roland to pay expenses in the opposition.
While Louboutin has faced challenges in seeking the registration of its iconic red sole, this decision now paves the way for the Louboutin Mark to be registered in the European Union and arms Louboutin with important trade mark rights that it can use to take action against competitors using a red sole on their high-heeled shoes in the European Union. The case of the Louboutin red sole shows that novel marks are capable of protection in the European Union and that, in addition to their brand names and logos, companies should invest in protecting their key brand indicia, including signature colours and shapes of products, in order to maximise their asset value and arm themselves with enforceable rights against competitors.