... as regards 3D representation of the Louboutin red sole, the OHIM recently conceded the validity of  CTM n° 8 845 539 in spite of 3^rd party observations explaining that red soles lack distinctive character and are customary in the bona fide and established practices of the trade (on the basis of article 7(1) (b) and (d) CTMR).

In September 2010 the examiner notified Louboutin that the trademark could not be registered in the meaning of Article 7(1) b) CTMR because the applied for 'red color' lacked distinctive character for the goods in question and the documents submitted did not effectively demonstrate the acquired distinctiveness of the trademark.

After an exchange of communication with the Office, CL changed the description from ‘shoes’ to ‘high-heeled shoes’ and this seemed to do the trick: it results from general experience that stilettos have black, brown or beige soles but the color red Pantone 18-1663TP does depart significantly from the norms of the sector and as such enjoys distinctintiveness ab initio (decision R2272/2010-2 in French). The Second Board of Appeal –hoping maybe to be rewarded with one of the famous pair- found that the documents submitted demonstrate that the trademark is perceived like an indication of origin on the market and that the Applicant has been actively fighting against its counterfeiting. Indeed the 3^rd party observations showing goods with the red sole on sale on eBay only reflected counterfeited listings against which CL has been fighting (2 841 listings have been canceled from the website between 2009 and 2011) and the considerable amount of ads is also an indication that the red sole of Louboutin functions as a trademark.