Tragic End of Trademark Challenge for Louboutin

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

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

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.