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The Japan Patent Office (JPO) Appeal Board has rejected a red colour trademark filed by luxury fashion brand Christian Louboutin, in a blow to its long-running bid to secure protection for its iconic red sole. Talking to WTR, a local expert claims that “the bar will be remarkably lifted” for brand owners seeking single colour trademarks following the ruling.
The decision, handed down on 7 June 2022, comes seven years after Christian Louboutin first filed a trademark application for a specific shade of red (Pantone 18-1663TP) on shoe soles for use on high heels in Class 25. The JPO examiner issued a refusal, stating that the red colour had been widely used on shoes to enhance their appearance and that red heels had been widely distributed before the 1996 launch of Christian Louoboutin’s iconic shoes in Japan.
The fashion brand filed an appeal in 2019. In a bid to add weight to its claim that the red soles had acquired distinctiveness, it conducted an online survey of over 3,000 women aged between 20 and 50 living in Tokyo, Osaka and Nagoya (where the company has retail stores). The survey found that 43% of respondents associated Christian Louboutin with the colour mark when asked an open-ended question. That figure rose to 54% when respondents were asked a closed-ended question that mentioned Christian Louboutin along with other luxury fashion brands. With those results in mind, the brand argued that it had acquired distinctiveness among its target market.
In last week’s decision, the JPO Appeal Board disagreed that the survey findings suggested acquired distinctiveness and affirmed the examiner’s original refusal. In the ruling, the board noted that the 43% figure in the survey meant that more than half of respondents could not identify Christian Louboutin as the brand behind the red soles, despite living in an area with Christian Louboutin stores. Therefore, the survey was “insufficient” to find distinctiveness among relevant consumers across Japan. In fact, the board went a step further, and stated that even consumers that did associate the colour mark with Christian Louboutin could not distinguish it from competitors that offer similarly soled shoes (eg, Christian Dior) without the aid of another source indicator (eg, the brand’s word mark).
In concluding that the single colour mark was not registrable, the board held that – under current trade practice – such a mark would cause “excessive restriction to competitors”, which, at present, may add such a colour to footwear to make their products more visually appealing.
Reacting to the decision, Marks IP Law Firm attorney Masaki Mikami says that it has “raised the bar to grant protection of a single color mark” in Japan. Specifically, he claims that it will be insufficient for brand owners to prove only acquired distinctiveness in order to obtain registered protection for a single colour going forward. Instead, they will need to meet the following two conditions:
- The colour has been substantially used on designated goods so that relevant consumers can identify a source of the goods simply by means of the colour perse.
- Registration of the colour would not cause an excessive restriction to competitors for the benefit of the public.
Therefore, the decision is a crucial one for rights holders to be aware of, Mikami explains. “If the colour has been commonly used in relation to the goods by competitors, the bar will be remarkably lifted for the benefit of the public,” he adds. “If the goods are consumed by the general public, a luxury brand will face difficulty to demonstrate a certain degree of reputation among general consumers including those who show lukewarm interest in luxury brands.”
For Christian Louboutin, the appeal board decision is another blow in its long-running and decidedly mixed global campaign to secure trademark rights in its red sole. The luxury brand has declared victory in the European Union, despite being denied protection in Switzerland. Elsewhere, the red sole has been found to be well known in India, but the brand has faced numerous courtroom battles to secure protection in the United States.
In Japan, Mikami speculates that Christian Louboutin could face further difficulties in protecting its signature heels. “Without trademark registration, Louboutin will have to rely on the Unfair Competition Prevention Law in order to protect lookalikes in Japan,” he concludes. “However, this latest JPO decision would be an obstacle to enforcement based on the Unfair Competition Prevention Law. “