JPO Rejected Colormark of Louboutin’s red soles

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

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.