An interim report of the Christian Louboutin Red Sole Shoe Trademark case. Recent results in Japan, the United States and Europe.
In a highly publicized and significant case, Christian Louboutin is currently filing a trademark application in Japan for “red soles for women’s high heels.” The company was denied registration at the review stage, and is currently pending at the appeal stage. Different counties – different decisions on single color marks.
The Japanese Patent Office issued a decision of refusal at the examination stage, and Mr. Louboutin is not satisfied with it and has appealed. In Japan, Mr. Louboutin filed an application due to the revision of the law on trademarks in 2015 which incorporated marks consisting solely of color registration.
Louboutin has already registered the trademark in the EU and the US, and trademark infringement lawsuits have also been filed in the EU and the US. In the EU, Dutch shoemaker VAN HAREN was the opponent, and in the US, Yves Saint Laurent was the opponent.
In these cases, the effectiveness of the brand has been affirmed in these two countries. For more details, in the EU court, the defendant challenged the validity of the trademark registration: the validity of the red sole mark was upheld, however, an infringement decision was not confirmed. As for the United States, in the district court neither validity nor infringement was upheld, however, in the high court validity was upheld but infringement was not.
In Japan, Mr. Louboutin’s lawsuit against a Japanese shoe manufacturing company is based on violation of the Unfair Competition Law. He claimed the company produced and sold women’s high-heeled shoes with Louboutin’s distinctive red sole which is similar to the brand. Please note that the aforementioned trademark application is not yet registered in Japan, therefore, it used the Unfair Competition Law.
This case has been submitted to the Tokyo District Court and a final decision has been issued. The result was the defeat of Mr. Louboutin. The district court said, “The red color of women’s high-heeled shoes is not recognized as an identifying mark for the goods.”
In my opinion, the real reason for this decision is that Mr. Louboutin’s high-heeled red soles have been sold in Japan for only 20 years. Additionally, in Japan, it is widely recognized that it has been common business practice in the industry for many years to put red soles on high-heeled shoes. In practice, most people do not associate the red soles of high heels with Mr. Louboutin’s products. However, there was very little related publicity about it.
Different counties – different decisions on single color marks. Going forward, attention will be paid to the impact of this decision on the JPO appeals service.