Since April 1, 2017, due to a revision of the law, a trademark consisting only of colors can be registered in Japan. As a result, a number of color trademark applications have been filed in the Japan Patent Office (JPO) as well as in Europe and the United States. As of 2020, the JPO has 8 registered “color-only trademarks”.
Laboutin Seeks One-Color Trademark for “Red Sole”
However, although “trademarks of multiple colors” are registered in Japan, there are no registered examples of “trademarks of only one color”. Currently, multiple applications for trademarks of only one color are under examination by the JPO / Trademark Department, including that for a “Red Sole” by Christian Louboutin, a famous French women’s shoe manufacturer.
The Christian Louboutin brand is famous in Europe and the United States. It had already been registered as a color-only trademark because Hollywood celebrities liked to wear the high heels of Mr. Louboutin’s red soles, and it became popular even in Japan. The application was filed after the 2017 revision of the law.
On the other hand, Japanese women’s shoe manufacturers and retailers have said, “It is a business practice to apply a red color to the soles, which has historically been done in Japan and has no discriminating power. Registration harms vested interests.” Many kinds of supportive information and commentary have been submitted to the JPO*.
*Kimura & Partners has been active in the case and has submitted evidence and arguments about how Japanese companies had legally established their use of Japan’s color as a vested right.
A Final Thought
The JPO has taken the position that “registration is not permitted in principle for trademarks consisting of only a single color. However, if the use proves that the distinctiveness is generated, it will be registered.” A notice of reasons for refusal was issued at the examination.
Mr. Louboutin has asserted and proven that “high heels with red soles are famous in Japan as are those of Louboutin” but the JPO has made a decision of refusal. Currently, Mr. Louboutin has filed an appeal and the second round at the Patent Office has begun. Future developments will be interesting to monitor.