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  • Dec 5,2023

    Trademark Protection for Single Color in Japan

    Takako OKADA

     

    Christian Louboutin, the French luxury shoe brand known for its shoes with red-colored soles, had been trying to seek trademark registration for its red sole in Japan, but was unsuccessful as they lost in an IP High Court appeal case in January 2023 (Case No. 2002 (Gyo-ke) 10089, Decision date 2023.1.31). The case shows that trademark registration for “single color” is quite difficult in Japan, even when the portion of the goods on which the color is used is specified.

     

    Louboutin’s trademark application identified a specific “red color” to be placed on a high-heeled shoe sole as the trademark to be registered. The IP High Court ruled that, in principle, color lacks distinctiveness and granting exclusive use thereof to a specific person would limit people’s freedom of selecting the color and be against public interests. An exception would be where the color has acquired distinctiveness through actual use, but the IP High Court held that especially when it comes to a trademark consisting of a “single color,” a high level of acquired distinctiveness, enough to be acknowledgeable as an exception against public interests, would be necessary.

    Using the criteria above, the court concluded that the level of acquired distinctiveness of Louboutin’s red soles was not high enough, based on the findings that (i) “red soles” were not unique, (ii) consumers would distinguish the source of shoes by logos, and (iii) market survey results only showed distinctiveness of Louboutin’s red soles in limited areas of Japan.

    No “single color” trademarks have been registered yet in Japan as of November 2023, and this IP High Court case seems to have confirmed that the criteria for registering a “single color” trademark is extremely high in Japan.

     

    As a related case, a month before the decision above, Louboutin had also lost in an appeal case of an injunction suit under the Unfair Competition Prevention Act which they filed against a Japanese shoe manufacturer Eizo Collection, who sold high-heeled shoes with red soles (Case No. 2002 (Ne) 10051, Decision date 2022.12.26).

    The IP High Court did not touch on the issue of whether a “red sole” would be considered as a well-known indication of source of Louboutin, and from the outset got into the issue of whether confusion would likely occur among consumers. They decided that no confusion was likely to occur because: (i) the prices of the two shoes are quite different (Louboutin’s shoes are about 5 times more expensive), (ii) many customers of high-heeled shoes would try on the shoes at real stores so they would not mistake the brand, and (iii) customers would make careful consideration upon buying Louboutin’s high-priced luxury shoes.

    Unlike word marks or logos, “color” is usually not a direct indication of the source of goods, which may have led the court to place weight on factors such as price and market upon determining whether confusion was likely to occur among consumers.

  • Nov 15,2023

    Preliminary Statistical Data on Patent Applications, etc. (data for August 2023)
    Toshihiro IGARI

     

    On November 2, 2023, the JPO released its data on patent applications, etc. for Augst 2023.  According to the data, it appears that the number of patent applications from January to August in 2023 is at mostly the same level as in 2020–2022 (see Comparison of the Monthly Number Over the Past Years, on page 1 of the following document: https://www.jpo.go.jp/e/resources/statistics/syutugan_toukei_sokuho/document/index/202308_graphs.pdf).

     

    Looking at past trends in the number of annual patent applications, as shown below, the number of patent applications showed a decreasing trend from 2014 to 2020, but has been flat since 2021 (see Number of Patent Applications, on page 1 of the following document: https://www.jpo.go.jp/e/resources/report/statusreport/2023/document/index/0101.pdf).

     

    Number of Annual Patent Applications from 2013–2022

    2013: 328,436

    2014: 325,989 (-2,447)

    2015: 318,721 (-7,268)

    2016: 318,381 (-340)

    2017: 318,481 (+100)

    2018: 313,567 (-4,914)

    2019: 307,969 (-5,598)

    2020: 288,472 (-19,497)

    2021: 289,200 (+728)

    2022: 289,530 (+330)

     

    Recently, the IMF announced that Japan’s GDP will be overtaken by Germany’s GDP in 2023 as it slips from No. 3 to No. 4 in the world on a U.S. dollar basis (https://www.japantimes.co.jp/business/2023/10/24/economy/japan-gdp-biggest-economies-imf/).  Since Japan’s GDP ranking is expected to fall further in the near future, attention will be focused on whether Japan can maintain the number of patent applications.

     

    Preliminary Statistical Data (data for August 2023): https://www.jpo.go.jp/e/resources/statistics/syutugan_toukei_sokuho/index.html

    JPO Status Report 2023: https://www.jpo.go.jp/e/resources/report/statusreport/2023/index.html

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Awards
  • Jan 23,2024

    We were highly evaluated in The Legal 500 (2024)
    In The Legal 500 Asia Pacific (2024), our firm was chosen as a top tier firm in the following categories, and the following attorneys and patent attorney were selected as “Leading Individuals”.

     

    Intellectual Property: Independent Local Firms: Tier 1

    Leading Individuals: Bengoshi:  Eiji Katayama   Junichi Kitahara   Makoto Hattori

    Leading Individuals: Benrishi:  Hiroshi Kobayashi   Mami Hino

     

    Restructuring And Insolvency: Independent Local Firms: Tier 2

    Leading Individuals: Bengoshi:  Eiji Katayama

     

    Dispute Resolution: Independent Local Firms: Tier 3

     

  • Dec 14,2023

    We were highly evaluated in Chambers Asia-Pacific 2024
    In Chambers Asia-Pacific 2024(Chambers & Partners), our firm was highly evaluated in the following category, and the following lawyers and patent attorneys were highly evaluated.
    Please check the website of Chambers & Partners  for more details.

     

    Intellectual Property (domestic)  Band 1

    Ranked lawyers: Eiji KatayamaJunichi KitaharaMakoto Hattori and Mami Hino

     

  • Sep 14,2023

    We were highly evaluated in Asialaw 2023/2024
    In Asialaw 2023/2024, our firm was highly ranked in the following categories, and the following attorneys and patent attorneys were selected as leading lawyers.

     

    Intellectual property…Outstanding
    Pharmaceuticals and life sciences…Recommended
    Dispute resolution…Highly recommended
    Restructuring and insolvency…Highly recommended

    Ranked lawyers: Eiji KatayamaJunichi KitaharaMakoto Hattori and Mami Hino

     

  • Jul 13,2023

    Mami Hino was recognized as WIPR Leaders 2023 (Japan)
    Mami Hino was recognized as one of the leading IP lawyers in WIPR Leaders 2023 in Japan.

     

  • Jun 30,2023

    We were highly recognized in IP Stars 2023
    In IP STARS 2023, our firm was highly evaluated in the following category, and the following attorneys and patent attorneys were recognised as leading intellectual property specialists.

     

    Patent disputes – domestic firms (2023) : Tier 1
    Patent prosecution – domestic firms (2023) : Tier 3

     

    Patent star 2023:Eiji Katayama Hiroshi Kobayashi Mami Hino Naho Ebata Shimako Kato
    Trade mark star 2023:Naho Ebata
    Top 250 Women in IP 2023:Shimako Kato

     

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