Christian Louboutin lost an unfair competition dispute in Japan

This blog has published news here and here about  Christian Louboutin‘s struggles to protect its red-sole ladies’ shoes around the world. After failing to register a trademark for its red sole in Japan the company tried to protect it against the Japanese competitor Eizo Collection Co., Ltd. based on the Unfair Competition Prevention Law.

Eizo produces ladies’ shoes including one with red soles.

Being unhappy with this Christian Louboutin filed a lawsuit in order to prohibit such use claiming an established reputation for its red soles.

The Tokyo District Court wasn’t impressed and dismissed the case which provoked an appeal.

The IP High Court upheld the lower Court’s position. Reaching this conclusion the Court considered that Louboutin’s shoes and those of Eizo are in different price segments. More expensive products require more attention in the process of purchasing as a rule of thumb. In addition, the Court pointed out that most shoes bear the producer’s brand apart from the visual aspects, this is true even in the case of online sales.

When it comes to the claimed reputation, the Court considered that it was not proved sufficiently. The provided research showed that 51,6% of the women between their 20s and 50s living only in big cities associate the red soles with Louboutin. According to the Court, this was not enough for a remarkable reputation to be established in the market as a whole.

Source: Masaki Mikami, Marks IP Law Firm.

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Christian Louboutin failed to register its red sole as a trademark in Japan

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.

Source: Masaki MIKAMI, MARKS IP LAW FIRM.

New Balance won a $2.8 million lawsuit in China

The US sportswear company New Balance has won an important lawsuit in China related to its trademark.

The case at hand concerns the Chinese company New Barlun that uses the letter N on shoes. This letter is a New Balance well-know trademark all over the world. However, New Barlun succeeded to registered the sign first in China.

The US company initiated a lawsuit seeking invalidation of the mark based on a bad faith registration that took advantages of the New Balance’s trademark global reputation.

The court concurred with the US company finding bad faith approached by New Barlun, which was proven by the fact that the Chinese company failed to cease infringement despite the court issuing an interim injunction order.

The Court ordered $2.83 million in damages to New Balance for the trademark infringement. This is one of the biggest sum awarded by a Chinese court in case of trademark infringement in the field of sportswear.

Another indicative moment regarding this dispute is that trademark registration doesn’t mean a save harbor for the relevant applicant if the mark is registered in bad faith especially in light of worldwide well-known brands.

Source: WIPR.

Crocs’ footwear with trademark problems in Sweden

In 2018 Crocs Inc. filed the following three-dimensional trademark in Sweden for class 25 – footwear:

Initially the Patent Office refused to register this mark on absolute grounds. Crocs submitted evidence for acquired distinctiveness which resulted in a successful registration.

The Swedish discount store ÖoB was selling similar products between 2014 and 2019.

Because of this Crocs Inc. initiated a lawsuit proceeding for trademark infringement. As a counter attack ÖoB asked for invalidation claiming that the Crocs’ trademark was not distinctive, it consists exclusively of a shape, which resulted from the nature of the goods themselves and a shape necessary to obtain a technical result.

The Swedish Patent and Market Court dismissed the claim for trademark infringement and invalidated the Crocs’ mark. The arguments for this decision was that the mark represents a footwear with the following characteristics 1) holes on the top 2) holes on each side 3) the heel strap 4) flat rivets, and 5) wide toe-area. Every of these characteristic could be attributed to the basic functions and properties of this type of footwear. It therefore concluded that the shape of the mark was the result from the nature of the goods themselves and the shape of goods was also necessary to obtain a technical result because the holes provides a better ventilation and enabled water to drain out.

The decision was appealed.

The Swedish Patent and Market Court of Appeal disagreed with the Court of first instance. According to the court the shape of such a footwear can be designed in different ways not only in that particular. The size, holes and overall design can be accomplished in many different ways. Because of this it cannot be assumed that the shape is a result from the nature of the goods.

The court considered that ventilation and draining a water out, in the particular case, can not be views as a technical function.

Nevertheless, the Court invalidated the Croc’s mark based on a lack of distinctive character. According to the Court, the evidence for acquired secondary meaning provided by Crocs mainly show significant sales figures but there is no information on how exactly consumers perceived the shape of the product and whether this perception is related to a sign of trade origin.

The Court considered the market survey from 2008 provided by the company as insufficient. The respondents in this survey associated the footwear with “Foppatoffeln” a name that is related to the hockey player Peter Forsberg who suffered from a heel injury, prompting him to wear the Crocs footwear on TV and in other public contexts. Only 7% of them related the product shape with Crocs as manufacturer while 46% suggested that the footwear could originate by any manufacturer. The survey didn’t include an option for an answer “do not know”, which ruined its credibility up to a point.

The advertisement campaigns with this footwear included the Crocs name and the depiction of crocodile too. The Court considered this as another evidence that consumers perceived the shape as a product characteristic not as a trademark.

Source: IPKat.

The Louboutin’s red shoe case – an important European court decision

The European court has issued an important decision regarding the well-known case C‑163/16, Christian Louboutin, Christian Louboutin SAS v Van Haren Schoenen BV. The case concerns the following:

 Christian Louboutin designs and produces shoes.

On 28 December 2009, Mr Louboutin filed an application for registration of a Benelux trade mark with the Benelux Office for Intellectual Property, leading to the registration, on 6 January 2010, under number 0874489, of a trade mark for goods in Class 25 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponding to the following description: ‘Footwear (other than orthopaedic footwear)’ (‘the mark at issue’).

That mark is reproduced below:

In the application for registration, the mark at issue is described as follows:‘The mark consists of the colour red (Pantone 18‑1663TP) applied to the sole of a shoe as shown (the contour of the shoe is not part of the trademark but is intended to show the positioning of the mark)’.

On 10 April 2013, the registration was amended in such a way as to limit the goods covered to ‘High-heeled shoes (other than orthopaedic shoes)’.

In the course of 2012, Van Haren, which operates shoe retail outlets in the Netherlands, sold high-heeled women’s shoes with red soles.

On 27 May 2013, Christian Louboutin initiated proceedings before the Rechtbank Den Haag (District Court, The Hague, Netherlands), claiming that Van Haren had infringed the mark at issue. On 17 July 2013, that court delivered a default judgment upholding in part the claims of Christian Louboutin.

Van Haren challenged that judgment before the referring court, the Rechtbank Den Haag (District Court, The Hague), claiming that the mark at issue was invalid on the basis of Article 2.1(2) of the Benelux Convention. Van Haren maintains that that mark is a two-dimensional figurative mark that consists of a red coloured surface.

The Rechtbank Den Haag (District Court, The Hague) considers, first, having regard to the graphic representation and the description of the mark at issue, that the colour red is inextricably linked to the shoe sole and therefore that mark cannot be regarded merely as a two-dimensional figurative mark. In the view of the referring court, that assessment is not undermined by the fact that the description of that mark states that ‘the contour of the shoe does not form part of the mark’. The referring court states that, on the contrary, that assessment is confirmed by that specification, in particular since, according to the description, the shape of the shoe, as illustrated in the graphic representation of the mark at issue, is not intended to reduce the sign to a two-dimensional mark, but is intended rather to show the positioning of that mark.

The referring court also considers that, in autumn 2012, ‘a significant proportion of consumers of women’s high-heeled shoes in the Benelux States was able to identify [Christian Louboutin] shoes as goods originating from that producer and was thus able to distinguish them from women’s high-heeled shoes [from] other undertakings’. Therefore, at that time, the mark at issue was perceived as a trade mark in relation to those goods.

Furthermore, in the view of the referring court, the red sole gives substantial value to the shoes marketed by Christian Louboutin since that colour forms part of the appearance of those shoes and plays an important role in a consumer’s decision to purchase them. In that regard, the referring court notes that Christian Louboutin first used red colouring on soles for aesthetic reasons and only later started regarding it as an identifier of origin and using it as a trade mark.

Lastly, the referring court states that, since the mark at issue consists of a colour which is applied to the sole of a shoe and is thus also an element of the product, the question arises as to whether the exception set out in Article 3(1)(e)(iii) of Directive 2008/95 applies to that mark. In that regard, it is unsure whether the concept of ‘shape’, within the meaning of that provision, is limited solely to three-dimensional properties of a product, such as its contours, measurements and volume, or whether that concept also covers properties that are not three-dimensional.

In those circumstances, the Rechtbank Den Haag (District Court, The Hague) decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘Is the notion of “shape”, within the meaning of Article 3(1)(e)(iii) of [Directive 2008/95] (respectively referred to in the German-, [Dutch-] and French-language versions of [that directive] as “Form”, “vorm” and “forme”), limited to the three-dimensional properties of the goods, such as their contours, measurements and volume (expressed three-dimensionally), or does it include other (non-three-dimensional) properties of the goods, such as their colour?’

The Court’s decision:

Article 3(1)(e)(iii) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that a sign consisting of a colour applied to the sole of a high-heeled shoe, such as that at issue in the main proceedings, does not consist exclusively of a ‘shape’, within the meaning of that provision.

Adidas won a trademark case in Japan

Masaki MIKAMI informs about a trademark victory of Adidas in Japan. The case concerns the following registered trademark by a Japanese company for Class 25:

Adidas filed an opposition against this mark but unsuccessfully. Fore years later the company initiated an invalidation procedure, just before the five years period of acquiescence. Adidas based its move on the following earlier trademark:

This time, the Patent Office ruled that both signs are similar and the later mark had to be invalidated because:

• The Adidas’ mark is a mark with a strong reputation in Japan, proved since 1971;
• The mark hadn’t been changed significantly throughout this period of time;
• The later mark gives rise to the same visual impression in the consumer’s mind by sharing similar graphical representations.

Source: Marks IP.

 

 

Designs, novelty and a General Court decision

The General Court of the EU ruled in Case T‑651/16, Crocs, Inc. v EUIPO, Gifi Diffusion. This case concerns a registered EU design 257001-0001 by Western Brands LLC on 22.11.2004 with claimed priority based on a US design registered on 28.05.2004.

This EU design after that was transferred to Crocs. In 2013, the French-based company Gifi Diffusion filed an application for a declaration of invalidity of the design based on a lack of novelty.

As it is known, one EU design can receive protection only in the case that it is novel and has individual character.

EUIPO took a decision for invalidation of the design, which decision was confirmed by the General Court.

The reason for this was that information for the design was available in 2003 through the Corcs’ website, it was displayed on an exhibition in Florida and was available for sale.

Corcs argued that such information wasn’t accessible in EU at that time, but the Court dismissed it because there was no evidence that the Corcs’website wasn’t accessible in EU.

This case is indicative of the need for a good intellectual property planning. In the case of industrial designs and inventions, this is crucial because if these IP assets are not new, for example, they cannot be protected. Due to this, all information regarding them has to be managed very carefully in order to fulfill the respective legal requirements.