The applicant relies on national case-law in the Netherlands (exhibits 3 and 4). Although national case-law can be of relevance if the circumstances of the case are the same, it is explained that the red soles give substantial value to the goods because the
EUTM proprietor initially chose to use the colour red to give his shoes energy and because it is sexy and attracts men to the women who wear red-soled shoes.
Even if it is the case, the intention of the EUTM proprietor, by using red soles, is not relevant.
Pretty Little Liars is kinda dumb... (part 2)
The only relevant criteria is the perception of the public. If at the time of filing the contested trade mark the public was not educated to see the colour of external soles as an aesthetic function determining its purchase, the mark will not be considered as falling foul of Article 7(e)(iii) EUTMR.
The survey provided (exhibit 8), is not convincing as regards the perception of red soles by consumers, since the questions asked are about the appearance of the shoes as a whole and as previously mentioned, the colour of the soles do not usually
determine the appearance of a shoe.
If consumers buy shoes, it is because of the appearance of the shoe as a whole, generally excluding the soles. As correctly mentioned by the EUTM proprietor, the market survey only shows that around 50 % of
the respondents, who were shown a picture of red soles shoes and were asked the question If you were considering buying the shoes in this picture, what would be your main consideration when deciding on the purchase of these shoes?
, responded by
referring to their appearance, but this gives no indication as to the intrinsic value given to the red sole.
According to the EUTM proprietor, the contested trade mark acquired great value because the red sole is perceived as a trade mark indicating the commercial origin of the goods.
Even if today the red sole of the models created by Christian Louboutin is
seen as a very attractive feature, this is only because it works as a trade mark and serves as the signature of Christian Louboutin. As mentioned by the EUTM proprietor, it is clear that the commercial value of high-heeled shoes does not depend on the colour of their soles, but only on their design, their finish, the materials of which they consist, and the cost of the craftsmanship required to make them, as well as the reputation and/or the success of their designer.
The applicant does not provide any facts which would lead to the opposite conclusion and for a declaration of invalidity.
In the light of the above, the Cancellation Division concludes that the application should be rejected.