Appeal Board of Japan of the Japan Patent Office recently rejected a trademark tried to get registered by French luxury shoemaker Christian Louboutin for its patent red high-heeled shoes. Louboutin filed for registration with the colour mark application for its heel’s red colour which is Pantone 18-1663TP in the year 2015 and it was refused and rejected by the JPO Examiner. An appeal was then filed upon rejection to which the JPO’s Appeal Board refused the appeal for any registration again.
The attorney (founder) at Marks IP Law firm in Osaka, Masaki Mikami explained the grounds of the colour mark registration refusal. “The JPO considers two factors in assessing the registrability of a single colour mark. The first factor is ‘acquired distinctiveness’ by virtue of substantial use of the colour per se as a source indicator. The second factor is ‘balancing unfair restraint to competitors with benefits to brand owner if granted protection to the single colour mark’. The JPO denied registrability of the Louboutin’s colour mark even if it demonstrated a certain degree of reputation among relevant consumers in Japan by weighing on the second factor.”
Christian Louboutin has been proactive in protecting their red-sole heels in any trademark lawsuits. Louboutin was successful in registering a Benelux trademark for its red colour mark – Pantone 18-1663TP, the colour of the shoe soles in the year 2010. Then, in 2012, Louboutin sued the Dutch shoe maker Van Haren for infringement of their trademark by using red soles in their heels before the Dutch District Court and after years of a log litigation journey, the Court of Justice of the European Union ruled in favor of Louboutin, considering their red sole mark as valid in June of 2018.
Louboutin, in 2008, was also successful in filing for registration and getting their red sole mark registered in the US. In 2011, they filed a lawsuit against the famous Yves Saint Lauren (YSL) for manufacturing and retailing monochromatic red shoes with red soles. The New York Court of Appeals ruled in favor of Louboutin in 2012 and considered the red-sole trademark as valid for protection even when another shoe is completely red.
According to the decision taken up by the JPO regarding the Louboutin red-sole colour mark, Mikami is thought to believe that Japan has a more rigid criteria as compared to other jurisdictions regarding the colour mark registrations. He also stated, “So far, the JPO just allowed registration of 9 colour mark (no single colour, only a combination of colours) by finding acquired distinctiveness in Japan,”. The success rate for colour mark registrations is a measly 1.6%.
The red-sole colour mark of Louboutin can also be used as an example before anyone goes to register their colour marks in Japan. Mikami said that, “Unless brand owners are confident that the colour per se has acquired a certain degree of reputation as a source indicator (at least, higher than Louboutin’s red sole), as a matter of fact, it might be a long road to go to nowhere.”