Christian Louboutin defeats challenge against registration of 'red sole' mark

European Union

In Roland SE v Office for Harmonisation in the Internal Market (OHIM) (Case T-631/14, July 16 2015), the Ninth Chamber of the General Court has upheld a decision of the First Board of Appeal of OHIM in which the latter had rejected the opposition filed by Roland SE against a Community trademark (CTM) application filed by Christian Louboutin (depicted below):

The CTM application had first been rejected by OHIM for lack of distinctiveness. However, on June 16 2011 the Second Board of Appeal cancelled the decision and allowed the publication of the mark, considering that it possessed sufficient inherent distinctiveness.

On November 10 2011 Roland filed an opposition against the registration of this CTM application on the basis of its earlier international figurative trademark MY SHOES designating the European Union (No 920225), registered on March 1 2007:

  

The opposition was based on the grounds of likelihood of confusion.

On June 21 2013 the Opposition Division of OHIM rejected the opposition. On August 15 2013 Roland appealed this decision. On May 28 2014 the First Board of Appeal of OHIM dismissed the appeal, holding that there was no likelihood of confusion between the marks at issue.

Roland brought an action before the General Court in order to annul the Board of Appeal's ruling. In support of this action, Roland put forward two pleas in law, the first alleging infringement of Article 8(1)(b) of the Community Trademark Regulation (207/2009) and the second alleging infringement of the general principle of audi alteram partem.

The court quickly set aside the second plea in law. The issue related to the fact that Roland had not been able to respond to a letter filed by Louboutin because the Board of Appeal had sent it to Roland after issuing its decision. The court considered that the principle of the rights of the defence had not been violated because this letter was not part of the documents on which the board had based its decision.

The court then turned to the other plea in law (confusing similarity between the two trademarks). From a visual standpoint, Roland argued that the two marks were similar given that the colour red, which was common to both marks, played a dominant role in each of the marks - this was due to the fact that, in the contested trademark, it was the colour red that conferred distinctiveness upon the mark, and that in the prior mark, the verbal elements were devoid of distinctive character.

These arguments were rejected by the court. The court first outlined that the mark applied for consisted of the colour red specifically placed in a certain position on a shoe - namely, on the sole. In addition, the court noted that the colour red was not dominant in the prior mark, as it was only present in the rectangle within which the term 'shoes' appears; hence, it was visible only in a minor part of the mark. Moreover, the red rectangle had only a decorative role and was thus of minor importance.

The court concluded that all the elements making up the earlier mark were equally distinctive, and that the visual impression given by the two marks did not permit the conclusion that the marks were visually similar.

Finally, the court rejected Roland's implausible argument that the prior figurative mark could be applied on the sole of a shoe in such a manner that only the red rectangle containing the term 'shoes' would cover the part of the sole corresponding to the arch of the foot - namely, its visible part. The court recalled that, when comparing two marks within the context of opposition proceedings, the marks must be compared in the form in which they have been registered/applied for, without taking into consideration their potential intended uses.

The absence of phonetic similarity between the marks was (fortunately) not contested by Roland. However, it is interesting to note that Roland tried to argue that there was a conceptual similarity between the marks. Indeed, Roland surprisingly stated that there was a conceptual link between the marks due to the fact that they both share the colour red and have a link with shoes.

These arguments were rejected by the General Court, which first emphasised that Roland had not demonstrated which specific concept/idea could be conveyed by the colour red, especially as that colour was not the only element that should be taken into consideration in the comparison of the marks.

Secondly, the court emphasised that the reference to shoes in the prior mark due to the presence of the term 'my shoes' was insignificant, given the lack of distinctive character of this term in relation to the goods at issue. Therefore, even if it was true that the marks at issue referred to shoes, this idea was devoid of any distinctive character given the goods at issue.

The court thus confirmed the Board of Appeal’s finding that there was no conceptual link between the red sole of a high-heel shoe and the red rectangle of the prior mark. There was thus no conceptual similarity between the signs at issue.

Having concluded that the marks were visually dissimilar, could not be compared - or at least were dissimilar - from a phonetic standpoint, and were conceptually dissimilar, the court dismissed the appeal.

It took a lot of effort and determination, but Louboutin has finally managed to obtain a registration for his 'red sole' trademark in the European Union.

Meriem Loudiyi, INLEX IP Expertise, Paris

Get unlimited access to all WTR content