Trademark difficulties when shoemaker Christian Louboutin tries to enter Japan’s marketAAA IPRIGHT2
Christian Louboutin, the Paris-based luxury shoemaker, has embarked on another trademark case in regard to their iconic red shoes. However, unlike other Western markets, the famous luxury shoemaker soon realizes that Japan has stricter rules of trademark registration for color applications.
Although the brand might sound unfamiliar to some, Christian Louboutin is one of the most famous luxury brands, specializing in its high-heel footwear.
While Louis Vuitton is known for its classic bags, Christian Louboutin made its name with its shiny red-lacquered soles.
The brand even topped the Luxury Institute’s annual Luxury Brand Status Index for 3 years running. Christian Louboutin shoe brand was declared the most Prestigious Women’s Shoes in 2007, 2008, and 2009.
Within the fashion industry, Christian Louboutin made its empire nearly without a hitch, on the other hand, on the legal side, the French luxury brand met their match.
Not just the recent denial by the Japan Patent Office but the shoe brand has also faced failure in the past in this jurisdiction.
A while back, Louboutin files a lawsuit against Eizo Co. Ltd., stating that the company infringes its intellectual property rights and sought damages under Japan’s Unfair Competition Prevention Law.
The court rules in favor of Eizo and deemed that customers would not be confused between the two brands, as two decades of sales in Japan and advertising is insufficient to find Louboutin’s red soles to have played a role as the original source in Japan.
Trademark registration denial
Back to the trademark registration case for the signature red soles, in 2015, the JPO refused the registration of Christian Louboutin for high-heel soles colored in red (Pantone 18-1663TP).
The shoe brand appealed the decision. In June 2022, the Appeal Board of the Japan Patent Office (JPO) once again rejected the trademark registration.
The reason for JPO’s refusal of the registration can be based on 2 elements.
The first is ‘acquired distinctiveness’ by virtue of substantial use of the color per se as a source indicator. This means that the color of the trademark application can’t be the basic red that everyone uses and knows of. Instead, it must be a somewhat unique type of red that only Christian Louboutin uses to acquire distinctiveness in the market.
The second element is ‘balancing unfair restraint to competitors with benefits to brand owner if granted protection to the single color mark’.
Basically, with the same effects and reasons as the first factor, the JPO will not grant trademark registration to a color mark if it creates a dominant to the basic type of color for the applicant, henceforth restricting other businesses’ development.
From JPO’s decision, international businesses that want to expand to Japan and seek to register a single color mark can draw experience that if their color mark doesn’t acquire distinctiveness higher than that of Louboutin red sole trademark, they should not apply for registration as it will fail.
The success rate for color mark registration in Japan is very low, only 1.6% for all applications. However, among the 9 successfully registered color marks, all of them are made from a combination of colors, not just individual colors such as Louboutin’s red sole.
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– You could visit here to see Procedure of Trademark in Japan.
– You could visit here to check the Required documents of filing trademark in Japan.
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