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.
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.