In a very high profile and significant case, Christian Louboutin is currently filing a trademark registration application in Japan for “red soles for women’s high heels”. The company was refused registration in the examination stage, and it is currently pending in the Appeal Stage. Different Counties – different decisions on one-colour trademarks.
The Japan Patent Office made a decision of refusal at the Examination Stage, and Mr. Louboutin is dissatisfied with this and filed an appeal. In Japan, Mr. Louboutin filed an application because of the revision of the trademark law in 2015 which incorporated trademarks consisting of only color registration.
Louboutin has already registered the trademark in the EU and the United States, and infringement suits based on trademark rights have also been filed in the EU and the United States. In the EU, Dutch shoe maker VAN HAREN was the opponent, and in the United States, Yves Saint Laurent was the opponent.
In those cases, the effectiveness of the trademark was affirmed in both of those countries. For greater detail, in the EU court, the Defendant attacked the validity of the trademark registration: the validity of the red sole trademark was affirmed, however, an infringement decision was not affirmed. As for the United States, in the district court, neither validity nor infringement decisions was affirmed, however, in the high court, validity was affirmed, but infringement was not.
In Japan, Mr. Louboutin’s suit against a Japanese shoe manufacturing company is based on breaching the Unfair Competition Law. He asserted that the company has produced and soled woman’s high heel shoes with Louboutin’s distinctive red sole which is similar to the trademark. Please note that the above-noted trademark application is not registered in Japan yet, therefore, he used the Unfair Competition Law.
This case was submitted to Tokyo District Court and a final decision was rendered. The result was Mr. Louboutin’s defeat. The district court said, “The red color of high-heeled shoes for women is not recognized as an identification mark for products.”
In my view, the true reason for the decision is that Mr. Louboutin’s red high heel soles have been sold in Japan for only 20 years. Also, in Japan, there is widespread recognition that it has been an ordinary business practice in the industry for many years to put red soles on high heel shoes. In practical fact, most people do not associate red soles on high heels with Mr. Louboutin’s products. However, there was very little related publicity about this.
Different Counties – different decisions on one-colour trademarks. In the future, attention will be paid to the impact of this decision on the JPO’s Appeal Department.