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.

Advertisement

Puma won a dispute over figurative trademarks in Japan

Masaki MIKAMI reports about a dispute over figurative trademarks in Japan. The case at hand concerns a trademark application for the following figurative mark applied for class 25:

Against this sign an opposition was filed by the German sportswear manufacturer PUMA on the ground of the following early famous sign in class 25 too:

Puma has been using this sign for most of its sports shoes since 1958. The company submitted evidence for the available reputation of its mark in Japan, amongst other annual sales of 15 billion yen and 4% market share.

The Patent Office agreed that the earlier sign has a strong reputation in the market. In the assessment of the signs, the Office concluded significant similarities to the extent that the new sign can be perceived as a reversed version of the earlier sign.

Taking into account the identity and similarity between the goods in both marks, the Office considered both marks as similar enough to create consumer confusion about the source of trade origin.

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.

Not every shoelace can be a European trademark

One interesting case from Europe focusing our attention on the challenges related to the registration of position trademarks.

The Austrian company Think Schuhwerk GmbH filed a European trademark application for the following position trademark with this description – shoes with laces, at the ends of whose laces red needles are arranged:

The EUIPO refused to register this mark based on absolute grounds, namely art. 7(1)(b) of Regulation 207/2009 which prohibits registration of not distinctive signs.

As a general rule, product appearance can be a trademark but only if deviates significantly from the norm or customary in the sector typical for the relevant product.

The EUIPO considered the shoelaces as not distinctive enough in order to represent a trademark. They have only a decorative character. What’s more, there are products with similar characteristics on the market.

The decision was appealed but upheld by the General Court of the European Union ( T‑298/19).

According to the Court, the distinctive character of a sign does not depend on how new and original it is but on the fact to what extent it deviates from what is customary in the industry.

The applicant’s argument that all other designs of shoelaces become free to use by competitors was dismissed by the Court as not having something in common with the grounds for refusal.

This case comes to reminds us how difficult registration of position trademarks can be. The sign should be significantly distinctive in order to have chances for successful registration.

Source: Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

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.

Converse lost a dispute for a shoe sole in the EU

pexels-photo-1353361.jpegThe General Court of the European Union has ruled in the case T-611/17 All Star (Converse) v EUIPO – Carrefour Hypermarchés. The case concerns the following already registered figurative European trademark for classes 17, 25,35:

CJ4JX4FZVCC523YA2TMALSKFLG766LZ66GCBK6GKXEAMQE5QIQ22H3KCJTKP6CENMYIUUNBNEKJQU.jpg

Against this mark, an application for a declaration of invalidity was filed by the French company Carrefour based on Article 52(1)(a) EUTMR and Article 7(1)(b) and (e)(ii) and (iii) EUTMR.

EUIPO invalidated the trademark at hand concluding that it is not possible for consumers to perceive it as a sign for trade origin. According to the Office, the practice of using simple geometric shapes for soles are widespread, as can be seen for many examples:

Untitled

Consumers will look on them as something that will help them to walk easily, comfortably or securely but not as a sign for trade origin.

Although the Office made some mistakes when it comes to the scope of goods and services for which this invalidation is applicable (corrected after that), the General Court confirmed this decision in its entirety.

The EUIPO decision is accessible here.