カテゴリー: Position mark

Japan IP High Court Decision to A Position Mark of Dr. Martens’ Yellow Welt Stitch

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On August 10, 2023, the Japan IP Hight Court ruled to dismiss an appeal by Airwair International Limited to the JPO’s rejection against a position mark for Dr. Martens’ Yellow Welt Stitch.

[Court case no. Reiwa 5(Gyo-ke)10003]

Dr. Martens’ Yellow Welt Stitch

Airwair International Limited, a UK company, applied a position mark consisting of a yellow stitching around the perimeter of footwear on the outer sole edge (see below) for use on leather shoes and boots in class 25 with the JPO on June 12, 2018 (TM App no. 2018-77608).

Allegedly, first use of the position mark on the Dr. Martens “1460” boots has dated back to 1960 in UK. Leather shoes and boots bearing the yellow welt stitch have been continuously distributed in Japan by the applicant or a local subsidiary (Dr. Martens Japan) via company store (61 shops at present) and major shoes retailers since 1985. Recent annual sales for Dr.  Martens’ shoes in Japan exceed 6 billion Japanese yens and over 460,000 pairs. Airwair has routinely monitored and taken legal actions against lookalikes of shoes bearing the yellow welt stitch and been successful in stopping distribution of following shoes.

According to the brand awareness survey that targeted a total of 1,019 men and women aged from 15 to 59, 30.7% of the interviewees who have purchased leather shoes and boots could answer Dr. Martens at the sight of black leather shoes with the yellow welt stitch and 37.6% selected Dr. Martens from multiple choice.

On August 23, 2022, The JPO Appeal Board decided the yellow stitching of Dr. Martens does not possess its own distinctive character by stating that relevant consumers would not see the stitch as a source indicator, but as a mere decoration. The Board also negated acquired distinctiveness of the position mark based on the fact that a majority of frequent users of the goods in question could not connect the stitch with Dr. Martens. Accordingly, the Board sustained the examiner’s rejection (Appeal case no. 2021-2446).

Airwair filed an appeal against the JPO Appeal Board decision and argued inherent and acquired distinctiveness of the Dr. Martens’ yellow welt stitch in relation to leather shoes and goods.

IP High Court decision

Inherent distinctiveness

The Court paid attention to the circumstance that plenty of leather shoes and boots have been manufactured by means of the Goodyear Welted Method for long years and the thread stitched to attach the upper to the sole has often identical or similar color to the upper and sole. If so, in relation to yellow-colored shoes, a yellow stitch would be anything but distinctive.

Bearing in mind that the applied mark does not specify a color of the upper and the sole, the judge had a view that it is allowed to assess inherent distinctiveness of the position mark in relation to the shoes with a yellow thread, upper and sole and any colors.

Based on the foregoing, the Court found the position mark lacks inherent distinctiveness in relation to leather shoes and boots and shall be unregistrable based on Article 3(1)(iii) of the Trademark Law.

Acquired distinctiveness

The Court questioned relevance of the brand awareness survey that excluded consumers who had not purchased either leather shoes or boots in the past year. However, by taking account of an expert opinion that points out 15% shall be sufficient to admit distinctiveness of trade dress as a source indicator especially in fashion industry and the survey revealed there were over four times as many interviewees who selected Dr. Martens than Timberland (7.9%) from multiple choice, the judge ruled Dr. Martens’ yellow welt stitch has acquired a certain degree of recognition as a sign that the black leather shoes originate from the Airwair company.

In the meantime, the Court held there is doubt if the position mark would play a role in indicating its source even when used on a yellow or similar colored outsole or welt. As a matter of fact, Airwair has not taken actions against shoes having non-black outsoles and welts.

Given the applied mark does not restrict a color of shoes, a fact that Dr. Martens’ yellow welt stitch has played a role of source indication in relation to black leather shoes and boots is insufficient to find acquired distinctiveness of the appled mark and admit registration under Article 3(2) of the Trademark Law.

Obviously, the Court opens a gate to register Dr. Martens’ yellow welt stitch provided that a position mark consists of yellow stich and black upper and welt.

Tragic End of Trademark Challenge for Louboutin

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In a series of Louboutin’s legal challenge to claim exclusive right over red soles, the Japan IP High Court, on the heels of the dismissal of Louboutin’s infringement claim on December 26, 2022, affirmed the JPO rejection to TM Application no. 2015-29921 for a red colored mark in sole and ruled Louboutin’s red soles shall be unregistrable under the Trademark Law on January 30, 2023.

[Court case no. Reiwa 4(Gyo-ke)10089]

Louboutin’s Red Soles

Fast on the heels of the introduction to register color marks in Japan, Christian Louboutin filed a trademark application for a color mark consisting of a red (Pantone 18-1663TP) colored in soles (see below) for use on high heels in class 25 on April 1, 2015 (TM App no. 2015-29921).

JPO Rejection

The JPO Appeal Board found the color mark perse lacks distinctiveness in relation to the goods in question by taking into account the fact that a lot of shoes with red-colored soles have been distributed by other shoemakers in Japan.

Besides, under the current trade practice, the Board considered it will inevitably cause a severe disorder and excessive restriction to competitors if it allows registration of a red color that has been freely used in the relevant industry to enhance the aesthetic appearance of shoes. Based on the foregoing, the JPO concluded the color mark shall not be registrable under Article 3(2) as well.

Louboutin brought the case to the IP High Court and appealed to cancel the JPO decision.

IP High Court decision

In the decision, the IP High Court expressed a view that a trademark consisting of a single color shall not be registrable unless it has acquired an extremely high degree of recognition to indicate a specific source as a result of substantial use to the extent that exclusive use of the color would not cause detrimental effect to the public in general.

In this respect, the court affirmed the JPO findings that a lot of heels with red-colored soles have been distributed by other shoemakers in Japan for years and negated the inherent distinctiveness of the red-colored mark.

In the assessment of acquired distinctiveness, the court found the survey that demonstrated 51.6% of the interviewees (3,149 females, aged from 20 to 50) having a domicile in three big cities (Tokyo, Osaka, or Nagoya) was insufficient to find acquired distinctiveness of the red soles among relevant consumers, assuming that the percentage would become lower if the survey targets more females residing in other cities nationwide.

Even if Louboutin’s red soles have become famous among consumers who have a high interest in luxury brands, the Court has no reason to believe that the red colored mark has acquired an extremely high degree of recognition as a source indicator to the extent that general public would tolerate its exclusive use on soles.

Based on the foregoing, the IP High Court affirmed the JPO decision and dismissed entire allegations by Louboutin.

Consequently, Louboutin’s legal challenge was decisively blown off by two IP High Court rulings unless the Supreme Court holds out its hand on Louboutin.

Louboutin 2nd Defeat in Litigation over Red Soles

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By order of December 26, 2022, the IP High Court ruled to dismiss an appeal taken by Louboutin against the Tokyo District Court ruling that denied a source-indicating function of Louboutin’s red soles.

[Appeal court case no. Reiwa4(ne)10051]

Appellant, Christian Louboutin SAS, brought an appeal against the Tokyo District Court ruling decided on March 11, 2022.

In May 2019, Louboutin sued Eizo Collection Co., Ltd., a Japanese company that produced ladies’ shoes with red-colored rubber soles, and sought a permanent injunction as well as damages in the amount of JPY4,208,000 under the Unfair Competition Prevention Law. The Tokyo District Court did not side with Louboutin by finding an insufficient reputation of Louboutin’s red soles perse as a source indicator and thus unlikelihood of confusion.
See details here.

The IP High Court paid attention to the following factors to assess the likelihood of confusion in the case.

  1. Relevant consumers of high-heels (women from their 20s to 50s) are most likely to try on multiple pairs of shoes at a physical store and select the ones that fit them prior to the purchase.
  2. The market for women’s high heels can be divided into three categories: (1) luxury brand products, (2) affordable brand products, and (3) inexpensive no-name products. Undoubtedly, Louboutin’s high-heels priced at JPY80,000 and over are classified into category (1). In the meantime, Eizo’s shoes priced at JPY17,000 or less belong to category (2).
  3. Every high-heel bears a brand name or logo on the insole so that consumers can easily distinguish its supplier.
  4. E-commerce websites post not only images of ladies’ shoes but also the brand and condition of respective goods in advertisements.

Based on the foregoing, the judge found, irrespective of the resemblance in color on the outsole, no likelihood of confusion between both shoes.

As for the reputation of Louboutin’s red soles, the IP High Court admitted certain consumers may recognize the red soles as a source indicator of Louboutin, however, the judge questioned if the soles have acquired a remarkable reputation among relevant consumers in general based on the research targeted women, in their 20s to 50s accustomed to wearing high-heels, residing in major cities that revealed only 51.6 % of the interviewees answered Louboutin at the sight of a high-heel with red-colored sole and a fact that Louboutin has not been an exclusive supplier of red sole shoes for women.

JPO Rejected Colormark of Louboutin’s red soles

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On June 7, 2022, the Appeal Board of the Japan Patent Office (JPO) decided to reject a red color mark used on the soles of high heels by Christian Louboutin due to a lack of inherent and acquired distinctiveness.

[Appeal case no. 2019-29921]

Louboutin’s Red Soles

Fast on the heels of the introduction to register color marks in Japan, Christian Louboutin filed a trademark application for a color mark consisting of a red (Pantone 18-1663TP) colored in soles (see below) for use on high heels in class 25 on April 1, 2015 (TM App no. 2015-29921).

The JPO examiner refused the color mark based on Article 3(1)(iii) of the Japan Trademark Law by stating red color has been commonly used on shoes to enhance the aesthetic appearance and attract consumers of high heels. Red-colored heels and shoes have been widely distributed before the launch of Louboutin shoes in 1996 in Japan and even now. Under the circumstance and trade practice, the examiner had no reason to believe the color mark perse has acquired distinctiveness as a source indicator of Louboutin among relevant consumers in Japan. If so, the mark shall not be registrable under Article 3(2).

Louboutin filed an appeal against the refusal and disputed the inherent and acquired distinctiveness of Louboutin’s red soles as a color mark on October 29, 2019.

To bolster the acquired distinctiveness of the red soles, Louboutin conducted an online brand awareness survey to target 3,149 females, aging from 20 to 50 and having a domicile in Tokyo, Osaka, or Nagoya where Louboutin have stores. The survey demonstrated that 43.35% of the interviewees conceived of Louboutin in the answer to an unaided open-ended question (Q1). 53.99% associated the color mark with Louboutin in the answer to a closed-ended question, where it mentioned Louboutin along with other close competitors (Q2). Louboutin argued, that from the survey, it is obvious that Louboutin’s red soles have acquired distinctiveness among relevant consumers and shall be registered under Article 3(2) even though lacking inherent distinctiveness.

JPO Appeal Board decision

The Appeal Board affirmed the examiner’s findings and found the color mark perse lacks distinctiveness in relation to the goods in question by taking into account of fact that a lot of shoes with red-colored soles have been distributed by other shoemakers in Japan.

In the assessment of acquired distinctiveness, the Board pointed out a fact that more than half of the interviewees who live in the region where Louboutin stores are could not conceive of Louboutin in the answer to Q1. The survey was insufficient to admit acquired distinctiveness of the applied mark among relevant consumers nationwide, the Board found.

Even among the consumers who could associate the color mark with Louboutin, the Board had an opinion that as a matter of fact, they will be unable to distinguish Louboutin high heels from competitors’ shoes simply by means of red-colored soles without the aid of another source indicator, a wordmark “Louboutin”, used on the shoes given a lot of red-soled heels and shoes have been distributed by competitors as follows.

Besides, under the current trade practice, the Board considered it will inevitably cause a severe disorder and excessive restriction to competitors if it allows registration of a red color that has been freely used in the relevant industry to enhance the aesthetic appearance of shoes.

Based on the foregoing, the JPO concluded the color mark shall not be registrable under Article 3(2) as well.

Louboutin Unsuccessful in Litigation over Red Soles

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On March 11, 2022, the Tokyo District Court dismissed allegations by Christian Louboutin who claimed red-soled shoes distributed by the defendant infringe their intellectual property right and are liable for damages under the Unfair Competition Prevention Law.

[Judicial case no. H31(Wa)11108]

Louboutin’s red soles

Christian Louboutin SAS alleged heels and pumps with red-lacquered leather soles (Pantone 18-1663) perse (see below) have been famous as a source indicator of Louboutin shoes as a result of substantial use for more than two decades in Japan.

To demonstrate the remarkable reputation of the position mark with a single color, Louboutin produced a lot of evidence. Japanese subsidiary generated sales of JPY3,305 million for Ladies’ shoes in 2016. More than 70% of the shoes are heels and pumps with red-colored soles. The company has yearly spent JPY15 million and more on advertisements in Japan. According to the interview conducted in October 2020, 65% of the 3,149 interviewees (females aging from 20 to 50) answered Louboutin when shown the above image.

Disputed goods

Allegedly, Eizo Collection Co., Ltd., a Japanese business entity, began to distribute ladies’ shoes with red-colored rubber soles bearing the wordmark “EIZO” for JPY17,000 from May 2018 (see below).

In the litigation, Louboutin sought a permanent injunction, disposal of the disputed shoes, and damages in the amount of JPY4,208,000.

It should note that Louboutin’s attempt to register the position mark representing ladies’ heels with red-colored soles in 2015 has been pending by the Japan Patent Office due to a lack of inherent and acquired distinctiveness as of now.

Court decision

The Tokyo District Court denied a certain degree of reputation and popularity of the red soles to indicate Louboutin shoes by stating:

  1. Red color has been commonly used on shoes to enhance the aesthetic appearance and attract consumers. Ladies’ heels with red-colored soles have been widely distributed even before the launch of Louboutin shoes in Japan.
  2. Under the practice in commerce, two decades and advertisement would be insufficient to find Louboutin’s red soles have played a role in the source indicator in Japan.

Besides, the court found the unlikelihood of confusion between Louboutin and the defendant’s shoes on the grounds that:

  • Given Louboutin’s shoes are known for high-end heels that cost JPY80,000 and more, relevant consumers would pay attention to selecting and purchasing suitable goods. Being that Louboutin’s shoes has the stylized mark “Louboutin” on soles as well, it is unlikely that relevant consumers connect the defendant’s shoes bearing the wordmark “EIZO” on soles with Louboutin.
  • Because of the difference in respective materials on soles (lacquered leather for Louboutin, and rubber for defendant shoes), there exists a distinction in texture and luster to the extent that relevant consumers can easily distinguish the quality and source of respective goods.
  • The interview targeted consumers who have purchased high-end goods and famous brands. Since the interview failed to show the defendant’s shoes to the interviewees, it would be irrelevant to prove a likelihood of confusion between the shoes.

Based on the foregoing, the court dismissed the plaintiff’s allegations under the Unfair Competition Prevention Law and did not side with Louboutin.

Japan IP High Court Ruling on Distinctiveness of Position Mark

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On August 27, 2020, the Japan IP High Court ruled to affirm the Japan Patent Office (JPO) decision and rejected TM application no. 2016-34650 for a position mark consisting of fourteen open ellipses built-in grip section of cutting combs in class 21 due to a lack of inherent distinctiveness. [Court case no. Reiwa1(Gyo-ke)10143]

YS Park Cutting Comb

The YS Park Cutting Comb features a non-slip grip section with fourteen air ellipses spaced in 1cm intervals to allow for great flexibility and sectioning.

Allegedly, the comb has been distributed in many countries and its annual sales increased to 170,000~27,000 pieces for the last five years.

Position Mark

Plaintiff, a Japanese corporation to distribute the YS Park Cutting Comb since 1989, sought for registration for fourteen open ellipses built-in grip section of the Cutting Comb as a Position Mark (see below) on March 28, 2016.

In Japan, by an enactment of the New Trademark Law in 2014, new types of mark, namely, color, sound, position, motion, hologram, was allowed for trademark registration since April 2015.

JPO decision

On September 17, 2019, the JPO refused the position mark under Article 3(1)(vi) of the Trademark Law by finding that there are plenty of competitor’s combs with a design, pattern, hole, or pit in short intervals on the grip section and it gives rise to an impression of the decorative or functional linear pattern as a whole. If so, relevant consumers at the sight of cutting comb bearing the position mark would just conceive it as a pattern for decorative or functional indication, not as a source indicator. Besides, consecutive use on the YS Park Cutting Comb over a decade would be insufficient to acquire secondary meaning from the produced evidence and business practice in relation to cutting comb. [Appeal case no. 2018-8775]

Article 3(1)(vi) is a provision to comprehensively prohibit from registering any mark lacking inherent distinctiveness.

Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:
(vi)　is in addition to those listed in each of the preceding items, a trademark by which consumers are not able to recognize the goods or services as those pertaining to a business of a particular person.

To contend, the applicant filed a lawsuit to the IP High Court on October 29, 2019, and demanded cancellation of the decision.

IP High Court Ruling

This is the 2nd court case for the IP High Court to hear the registrability of Position Mark.

At the outset, the court stated the distinctiveness of Position Mark shall be assessed as a whole by taking account of a constituent of the mark and its position on goods or services.

The court upheld fact-findings by the JPO that plenty of competitors advertise and provide cutting combs with a pattern, pit, or open holes in short intervals on the grip section to enhance its function. In this regard, it is unlikely that relevant consumers (general consumers on the case) would consider the whole pattern as a source indicator of the comb. The court pointed that plaintiff has promoted features of fourteen open ellipses on YS Park Cutting Comb with an advertisement of “Air Suspension Function” in fact. If so, consumers would find the open holes as a functional indication.

Plaintiff produced interviews and statements by beauticians, hairstylists, school officials/staff of Cosmetology and Beauty school and argued the secondary meaning of the Position mark, however, the court negated the allegation on the ground that such evidence is insufficient and irrelevant to demonstrate acquired distinctiveness since the goods in question shall be broadly targeted to general consumers. Thus, the court decided the JPO did not error in finding secondary meaning in the case.

First ruling by IP High Court on New Type of Trademark in Japan

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On February 14 2020, the Japan IP High Court ruled to uphold the Japan Patent Office (JPO) decision and rejected TM application no. 2016-009831 for a 3D position mark consisting of three virtual images of oil stove flame due to a lack of inherent and acquired distinctiveness.
[Case no. Reiwa1(Gyo-ke)10125]

TOYOTOMI Oil Stove “Rainbow”

TOYOTOMI CO., LTD., a Japanese company, the world’s first manufacturer of kerosene-fired portable cooking stove in 1952, has allegedly produced their convection type lantern-like design oil stoves in the name of “Rainbow” since 1980.

By means of a heat-resistant glass coated on the inner surface of vertical cylindrical heat chamber of the Rainbow stoves, virtual images of orange flame appear floatingly above actual flame when stoves are in use (see below).

3D Position mark

TOYOTOMI sought for registration for its virtual images of flame in connection with convection type oil stoves in class 11 as a 3D Position mark (see below) on January 29, 2016.

In a description of the mark, applicant specified:

“applied mark is a position mark consisting of 3D virtual image of three flame rings appeared floatingly above the flame burning on stove at the inside of vertical cylindrical heat chamber. Devices colored in blue and red would not constitute an element of applied mark.“

In Japan, by enactment of the New Trademark Law in 2014, new type of mark, namely, color, sound, position, motion, hologram, was allowed for trademark registration since April 2015.

According to the JPO database, more than 480 position marks were applied for registration under the New Trademark Law and 78 position marks are successfully registered as of now (Feb 29, 2020).

JPO decision

On March 2, 2018, the JPO examiner refused applied mark under Article 3(1)(iii) of the Trademark Law based on the fact that mechanism of 3D virtual shape of three flame rings was exclusively protected under Patent No. 1508319 which was expired on July 25, 2000. According to technical specifications of the patent, it is admitted that the 3D shape was purely achieved as a result of utilitarian functionality and aesthetic functionality. If so, the JPO finds it inappropriate to register the shape as a trademark because of unfair and detrimental effect to the public caused by prospective perpetual exclusivity to the shape itself that should have been a public domain under the Patent Law.

Besides, the JPO considered applied mark has not acquired distinctiveness (secondary meaning) as a source indicator of applicant’s products regardless of substantial use for more than three decades.

Subsequently, JPO dismissed an appeal on the same ground. [Appeal case no. 2018-007479, on August 30, 2019]

To contend, applicant filed a lawsuit to the IP High Court on September 26, 2019 and demanded cancellation of the decision.

IP High Court ruling

This lawsuit was the very first case for the IP High Court to take up new type of trademark at the open court.

The court held a shape of goods shall not be protectable as a source indicator if it just aims to achieve function of the goods from utilitarian and aesthetic viewpoints. If such shape per se is apparently destined to achieve functions of goods, it shall be refused for registration under Article 3(1)(iii) of the Trademark Law.

In this regard, the court found, applied mark simply consists of a shape destined to achieve utilitarian and aesthetic functions of goods in question, since it is considered virtual images of floating flame ring aim to increase heating effect of convection type oil stoves.

A mere fact that none of competitors have used identical or similar shape with applied mark on oil stoves would be irrelevant to assess distinctiveness of mark under Article 3(1)(iii).

Even if three flame rings do not physically constitute a shape of oil stoves, the court would see the JPO did not error in adapting Article 3(1)(iii) on the case.

As for acquired distinctiveness, the court had no reason to believe applied mark acquired secondary meaning through actual use based on the produced evidence. TOYOTOMI allegedly held top-rank market share (22.5%) of convection type oil stoves in Japan and annually delivered 29,000 stoves on average for the last seven years. However, the court pointed out the TOYOTOMI Rainbow stoves share just 2% when radiation type oil stoves are counted. Besides, provided that applied mark is not visible to consumers who visit shops to purchase oil stoves from appearance of the goods when turned off, it is questionable whether average consumers would conceive the 3D shape as a source indicator, rather than a functional shape of oil stoves.

Based on the foregoing, the IP High Court upheld JPO decision.