In recent years, the emblematic red soles of luxury footwear designer Christian Louboutin have been subject to a much discussed legal saga, with episodes in a number of countries, including France, Belgium and the United States. To summarise, the courts have confirmed the need to claim a precise colour shade as a feature of the trademark at the time of its filing (Cass. Com., 30 May 2012, no. 11-20.724, Mr Christian Louboutin vs. Zara France, emphasising the lack of graphic representation for French trademark no. 3067674 which did not stipulate any precise shade of red; TGI Paris, 16 October 2014, no. 13/08301, Mr Christian Louboutin vs. Mrs Laken Ngami, conversely ruling in favour of French trademark no. 3869370 which stipulated a precise pantone).
The order dated 14 April 2016, rendered by the Court of Justice of the European Union, is in line with this case law; it however defines the limits of the protection granted to the colour red contained in a trademark registered prior to Mr Christian Louboutin’s trademark (ECJ, 14 April 2016, C-515/15 P, Roland SE vs. EUIPO and Christian Louboutin).
Indeed, considering that the filing of the European Union trademark no. 8845539 by Mr Christian Louboutin infringed its prior rights over the international trademark no. 920225, the German company Roland SE lodged a notice of opposition against such filing.
The validity of the trademark was not at issue in that case, since, having drawn the lessons from existing case law, Mr Christian Louboutin had taken the precaution to register his trademark with stipulation of a specific colour pantone. Instead, the jurisdictions were asked to assess the likelihood of confusion between the trademarks.
Following rejection of the opposition in its entirety by the European Union Intellectual Property Office (EUIPO) Opposition Division, the petitioner lodged an appeal that was also rejected on the grounds that there was no visual, phonetic or conceptual similarity between the conflicting trademarks, and that no likelihood of confusion therefore existed within the meaning of article 8, par. 1, under b), of regulation 207/2009 of 26 February 2009 on the Community trademark.
Roland SE then brought the case before the European General Court in order to obtain the annulment of the disputed ruling. Roland SE essentially argued that a visual similarity existed between its prior trademark and the trademark applied for by Mr Louboutin, since:
- the colour red played a dominant, or at least a non-negligible role, in each of the trademarks at stake;
- and that, concerning the prior trademark, the colour red was the only visible element when the trademark was stamped on the sole of the shoe.
The Court rejected those arguments, as well as the claim as a whole.
When an appeal was subsequently lodged with the Court of Justice of the European Union, it upheld the European General Court's decision regarding the first point, finding that "the red rectangle was incidental from a graphic perspective and neither its dimensions nor its positioning, to the right of the trademark, as a background for the word 'shoes', which is written in capital letters, was sufficient to consider that this rectangle was likely to dominate the overall impression produced by the trademark in question." Consequently, the simple shared presence of the colour red within the trademarks was not sufficient to create a likelihood of confusion.
Regarding the second point, it recalled that for the purposes of comparison between the trademarks, the prior trademark must be considered in the form in which it was registered and not in the form in which it may be used.