The trade mark consists of a particular pantone of the colour red as applied to shoes and it has been subject to several years of legal disputes. In the USA, following challenges to the registration by Yves Saint Laurent in 2012, the trade mark was limited to shoes where the red sole contrasts with the “upper” of the shoe. The Community Trade Mark (CTM) application was originally rejected by the trade mark examiner, then accepted by OHIM but opposed by three companies. All of the oppositions were rejected, presumably on the basis that the colour red as applied to the sole of a shoe has in fact become distinctive of the shoes designed and sold by Christian Louboutin. I am not a shoe-loving girl – bare feet for me or flip flops at a push – and even I know that a shoe with a red sole must be a Louboutin (I was a Sex-in-the-city addict in my youth).
Non-traditional trade marks like Louboutin’s red shoe sole are widely accepted in Europe, so it is not surprising that the Court of Justice of the European Union (CJEU) has this week handed down its judgment in Roland v Louboutin and OHIM, dismissing the remaining challenge to Christian Louboutin’s European trade mark for the colour red applied to the sole of a shoe.
Roland SE, a manufacturer and distributor of electronic musical instruments had originally opposed the trade mark on the basis of the red in its own trade mark. This particular case was unlikely ever to succeed as it was based on the simple fact that Roland uses the colour red in its own trade mark. But given that Roland is well known for electronic keyboards and Louboutin is famous for shoes, any argument concerning ‘confusion’ between the marks was always going to fail. OHIM rejected Roland’s original opposition and its appeal and now the EU’s highest court has too. Roland now has nowhere else to go to invalidate Louboutin’s CTM and this decision means that Louboutin will be able to continue defending its trade mark against competitors that manufacture or sell other shoes with red soles here in Europe, as we have already seen them do.