The JPO dismisses Louboutin Red Sole appeal. The JPO has issued its decision dismissing the appeal against the decision of refusal in the examination of the Christian Louboutin “Red Sole High Heels trademark” case. Due to this appeal decision, Louboutin’s attempt to register the “Red Sole High Heels” trademark in Japan was finally deemed unacceptable at the JPO stage.
Our earlier articles on the case were:
April 13, 2022 update on the Louboutin Case
February 12, 2021 update on the Louboutin Case
In my opinion, in assessing the process of the examination and appeal of this case, the background of this trademark registration failure is that the strategy of the Louboutin side was based on the presence of their “Red Sole High Heels” registered trademarks in Europe and the United States. It seems that they relied too much on the name of “Christian Louboutin” in Europe and the United States: they expected that the trademark would be also registered in the JPO without any difficulty due to the popularity and presence of the name in those regions.
However, in the Japanese shoe industry, the business practice of producing high-heeled women’s shoes with red soles has historically existed, and Louboutin’s red-soled high heels is not so special in the market. The difference between the Western women’s shoe market and the Japanese market is that the marks do not have the same distinctiveness – ie. the unique distinctiveness of Louboutin when it comes to high heels with red soles. The point is that this characteristic of the shoe industry is unique to Japan, and different from Europe and the United States.
Another key factor in the decision is the marketing methods used by Louboutin in the Japanese market. Louboutin did not actively advertise in media such as magazines, newspapers, TV, etc. because their Red Sole High Heel has been used by celebrities overseas and in Japan, and there have been many articles and stories about it. Therefore, they judged that it was proof enough that the name is well-known in Japan, and they did not dare to advertise to protect the value of the brand. An interesting argument indeed.
However, in the JPO’s examination of this case, I think that this was a fundamental factor against Louboutin. In proving the “well-knownness” of trademarks in the JPO and Japanese courts, likely also in foreign courts, proof of advertising investment costs, advertising methods, the number of advertisements, etc. is very effective. However, as the appeal decision in this case reads, and as a result of the above sales strategy, the Louboutin side could not assert, or provide concrete evidence of advertising effort or performance.
The deadline for filing an appeal decision revocation suit is October 2022. If Louboutin files a lawsuit due to their dissatisfaction with this decision, the lawsuit will be pending in the Intellectual Property High Court (Tokyo High Court). From the circumstances so far, it is expected that the Louboutin side will continue to try to acquire rights in Japan, and that they will file a lawsuit against the decision in the High Court. The defendant in this case will be the JPO, however, the success rate of appeal decision cancellation lawsuits is not very high.
In addition, in the District Court Louboutin has filed a lawsuit against a domestic shoemaker for violating the Unfair Competition Prevention Law. Similar to the JPO case, in the District Court, the Louboutin side lost the case for the same reason – ie. the lack of special distinctiveness or well-knownness. Louboutin decided to also appeal this decision to the high court. Therefore, Louboutin will have two lawsuits regarding the Red-sole High Heel trademark. The ongoing progress in the lawsuit of Louboutin in the Japanese courts will be the subject of future articles. The JPO dismisses Louboutin Red Sole appeal here in Japan, however the story is not finished yet.
