Roland SE v. Office for Harmonisation in the Internal Market (OHIM) (Case T-631/14, July16, 2015)
Christian Louboutin’s (“Louboutin”) CTM trademark application for its signature red sole mark (shown below) has successfully overcome all of the oppositions that were blocking its path to registration. Louboutin had been battling Roland SE (“Roland’), a manufacturer and distributor of electronic musical instruments, since it opposed the application in 2011. On July 16, 2015, the Ninth Chamber of the General Court issued a decision affirming the rejection of Roland’s opposition, which was based on Roland’s prior 2007 CTM registration for MY SHOES & Device covering “footwear” among other goods in Class 25, and goods and services in Classes 18 and 35 (shown below).
Louboutin filed its CTM application for the red sole for “high-heeled shoes (except orthopaedic footwear)” in Class 25 in 2010. Although the application was initially rejected by the examiner on distinctiveness grounds, the refusal was overturned by the Second Board of Appeals on July 16, 2011. On publication, Roland opposed arguing likelihood of confusion. The opposition was rejected by the OHIM on June 21, 2013, and then again by the First Board of Appeals on May 28, 2014. Roland then appealed to the General Court.
Roland argued that Louboutin’s red sole mark is visually similar to its prior mark MY SHOES & Device, since both marks share the same dominant element, namely the color red. According to Roland, the color red is the dominant element of MY SHOES & Device because the word elements of the mark are descriptive and there are no other distinctive features. The court rejected this argument, finding that the color red is not the dominant element of Roland’s mark as it is only used in a portion of the mark (i.e. the box containing the word “shoes”), making it a decorative feature of secondary importance.
Roland also argued that Louboutin’s red sole mark was confusingly similar to its mark because if Roland were to apply its mark to the sole of a high-heeled shoe so that the red rectangle containing the word SHOES is on the arch of the shoe, the shoe would essentially look like it has a red sole. The court declined to compare the marks in this manner and stated that they must be compared in the form in which they were applied for or registered.
Finally, Roland argued that the marks are conceptually similar, given that they both feature the color red and are associated with shoes. The court found that Roland failed to demonstrate that any particular concept is associated with the color red. Further, the word elements of Roland’s mark “MY SHOES” are descriptive, given that the mark is for “footwear,” and thus the reference to SHOES is insignificant.
Now that Louboutin has a CTM registration for its red sole mark, it will be easier for it to enforce the mark all over Europe. In the U.S., Louboutin’s infringement action against Yves Saint Laurent resulted in the limitation of its trademark to a red sole that contrasts with the color of the adjoining “upper” of a shoe. We now await how the European authorities interpret and enforce Louboutin’s rights in this non-traditional trademark.