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The devil wears Prada Louboutin đź‘
Article by Shaznee Seraj
3-4 mins read
The Parisian-born shoemaker, Christian Louboutin, loses trademark infringement case in Japan 🇯🇵
The celebrity-adorned Parisian born red soles shoemaker, Christian Louboutin, has recently lost trademark infringement and unfair competition law claims in Japan.
What happened?
Christian Louboutin has recently lost a legal battle over its trademark in Japan for the infamous red soles after filing suit against Eizo, a Japanese footwear manufacturer. Eizo has been selling pumps with a similar red sole on the market, but here’s the catch; the Eizo’s soles are made of rubber than leather instead. However, despite the differences in materials, Louboutin claimed that the Japanese footwear company was infringing on its red sole trademark which simultaneously broke unfair competition law by selling red-soled shoes (Pantone 18-1663) of its own without the affiliation of or authorisation from the famed French brand. In this instance, The Tokyo District Court sided with Eizo quoting Louboutin’s lack of right in the red sole trademark in Japan and that the average consumers are unlikely to covet the famed French brand – being one of the key elements of a trademark infringement claim.
The nitty-gritty
Louboutin’s legal team cited the brand’s constant use of the red sole in Japan for more than 20 years to support its claim of acquired distinctiveness. As a result, the company sought an injunction, damages in the amount of JPY 4,208,00 (approximately ÂŁ25,490.02) and a court order compelling Eizo to hand its red-soled heels to Louboutin for destruction. Christian Louboutin’s unfair competition action was also dismissed by the Tokyo District Court on March 11, after the celebrity-favoured footwear brand failed to prove that its red sole trademark had the necessary level of secondary meaning to function as a trademark.
Despite the sales and revenue report to prove the presence of the brand, the court decided against Louboutin, finding that red is a common cosmetic enhancer and that women’s heels with red soles were widely available before Louboutin’s market entry. The court went on to state that two decades of sales and advertising in Japan would not be sufficient to establish Louboutin’s red soles as the source in Japan under the practice of commerce.
Source: The Fashion Law
Interestingly, Louboutin referenced a consumer survey done in October 2020, which indicated that 65 per cent of 3,149 interviewees, primarily women aged 20 to 50, identified Louboutin as the supplier of a high heel shoe with a red sole. The court eventually ruled against the poll since the respondents were mostly luxury customers who were not shown a photo of Eizo’s footwear, only Louboutin’s.
The legal analysis
01. The main argument of the case can be derived from Louboutin’s failure to register the red sole in 2015. The trademark application on the red sole has been pending before the Japan Patent Office on the grounds of “a lack of inherent and acquired distinctiveness” as explored above. It appears to be a standard practice that the JPO are reluctant to register a single colour as a trademark in Japan (Barbie Pink, who?)
02. Given that Louboutin’s shoes also include the mark “Louboutin” on the soles, it seems doubtful that relevant buyers will associate the defendant’s shoes with Louboutin. Further, due to the difference in sole materials (lacquered leather for Louboutin and rubber for defendant shoes), there is a texture and shine difference to the point where relevant consumers can easily differentiate the quality and source of respective goods.
Comments, s’il vous plaît? 💬
The essence of IP law remains the same, despite it being trialled in Japan. It seems justified that the Japanese court refused to side with the Loubs as the trademark has not been registered in Japan.
Furthermore, the court also determined that there was no likelihood of confusion between Louboutin’s shoes and the defendant’s shoes because: Given that Louboutin’s shoes are known for high-end heels that cost JPY80,000 or more, relevant consumers would pay attention to selecting and purchasing appropriate goods. After all, who would get the iconic pumps mistaken? She is an icon after all!
Sources:
https://fashionunited.com/news/business/christian-louboutin-loses-trademark-case-in-japan/2022041347061
Christian Louboutin Handed a Loss in Red Sole Trademark Lawsuit in Japan
