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.