The popular shoe manufacturer Christian Louboutin is well-known for the attempt to register the red soles of its shoes as a trademark around the world. This creates a lot of disputes either with the local Patent Offices or with competitors.
One such attempt, this time in Japan, was decided by the Japan Patent Office and the result is not encouraging for the company.
Christian Louboutin tried to register the following figurative trademark in class 25:
The Patent Office issued a refusal based on absolute grounds – lack of distinctive character and the fact that this form has an aesthetic purpose because of which consumers are attracted to buy.
Christian Louboutin appealed by submitting evidence for acquired secondary distinctiveness. The main piece of evidence was an online brand awareness survey covering three cities in Japan. According to the survey, in the case of open-ended questions, 43.35% of the respondents recognized the red sole as a Christian Louboutin product. In the case of closed-ended questions, 53.99% reached that conclusion.
Still, the Patent Office wasn’t impressed. The reason was that this survey covered only locations where the company had stores, it didn’t show consumer awareness on a national level.
In addition, the Office considered that such registration could restrict competition because many other shoe manifacturers had used similar appearance for their products.
What is certain in such difficult cases is the need for good preparation. Only one piece of evidence, including a survey, most likely will not be able to solve the matter. An entire strategy and much more support are necessary in order to color trademark applications to be successful in most countries.