Log in

CLASS 46


Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

Want to receive Class 46 by email?
Click here subscribe for free.

Who we all are...
Anthonia Ghalamkarizadeh
Birgit Clark
Blog Administrator
Christian Tenkhoff
Fidel Porcuna
Gino Van Roeyen
Markku Tuominen
Niamh Hall
Nikos Prentoulis
Stefan Schröter
Tomasz Rychlicki
Yvonne Onomor
FRIDAY, 17 JULY 2015
General Court saves Louboutin shoes

In Case T-631/14, the General Court dismissed the appeal in the following opposition

M. Christian Louboutin

Roland SE – prior CTM

Image not foundImage not found

Image not foundImage not found

Class 25 ‘high heeled shoes’

Class 25 including ‘shoes’

Class 46 readers may remember C. Louboutin had successfully overcome OHIM’s objections on absolute grounds and the Second Board of Appeal had confirmed the sign could be registered as a position mark (see post here).

After the mark was published in 2011 in the CTM bulletin, the famous shoe manufacturer saw red one more time after an opposition was filed by German competitor.

Both OHIM and the General Court found that the conflicting signs are not similar : indeed, there are no relevant visual similarities, noting that the elements constituting the earlier mark were equally important and that the red rectangle was not dominant. The Court found that the Board of Appeal had rightly held that the earlier sign was a banal rectangle graphically. In addition, neither the size nor positioning of the word "shoes" warrant the conclusion that the red rectangle is likely to dominate the overall impression conveyed by the sign at issue.

The same applies, a fortiori, with regard to the red color as such. Although it is true that it is likely to attract more the attention from consumers, it occupies a small part of the sign, contrary to what the opponent claims. Therefore it does not affect the opponent's argument concerning the similarity of the two shades of red.

Moreover, the signs are not similar phonetically and showed no concept in common.

Finally, it is irrelevant that the earlier figurative trade mark may be affixed to the outer sole of high heel shoes, so that only the red rectangle with the word "shoes" would cover part of the sole corresponding to the arch of the foot, namely its visible part. Indeed, as noted by OHIM, the earlier mark must be taken into account for the purposes of comparing the signs in the form in which it was registered, and the prospective analysis of the likelihood of confusion between two marks cannot dependent on the commercial intentions, whether realized or not, and naturally subjective, of trademark owners (See Judgment T.I.M.E. ART/OHMI, C‑171/06).

Therefore, in the absence of an identity or similarity between those signs, which is one of the cumulative conditions for the finding of a likelihood of confusion within the meaning of Article 8 (1) b) of Regulation No 207/2009, said risk is excluded in this case.

Posted by: Laetitia Lagarde @ 07.19
Tags: general court, louboutin, red sole, my shoes, opposition, confusion,
Sharing on Social Media? Use the link below...
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA4138
Reader Comments: 0
Post a Comment


MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.


The Class 46 Archive






 

 

 

 

 

 


CONTACT

info@marques.org
+44 (0)116 2747355
+44 (0)116 2747365
POST ADDRESS

Unit Q, Troon Way Business Centre
Humberstone Lane, Leicester
LE4 9HA

EMAIL

Ingrid de Groot
Internal Relations Officer
ingrid.de.groot@marques.org
Alessandra Romeo
External Relations Officer
aromeo@marques.org
James Nurton
Newsletter Editor
editor@marques.org
Robert Harrison
Webmaster
robertharrison@marques.org
BLOGS

Signup for our blogs.
Headlines delivered to your inbox