With a 39-pages judgment issued in March 2022, the Tokyo District Court has ruled against the luxury fashion brand Christian Louboutin denying the certain degree of reputation and consequentially the infringement of the red soles to indicate Louboutin shoes.
Going back to the background, Christian Louboutin sued the Eizo collection, a Japanese footwear manufacturer that started to sell a red colored rubber sole on a women's shoes in May 2018.
The French shoemaker argued that the manufacturing and sale of shoes with a red (rubber) sole by the Japanese competitor mislead the consumers about the source of the goods and infringed its intellectual property right under Japan's Unfair Competition Prevention Law. The French company claimed for 42 million yen in damage compensation.
Louboutin claims were based on the assumption that no other companies can use red on the sole high heel's shoes, while it was not in discussion in this case the registrability of the red color as trademark. For this point, stay tune for next week article.
Notwithstanding several evidence submitted by Louboutin to demonstrate the remarkable status of the brand, the Court denied a certain degree of reputation and popularity of the red soles to indicate Louboutin shoes and stated that red color has been commonly used on shoes to enhance the aesthetic appearance and attract consumers.
Eizo shoes. Source: eizo-collection.com
Ladies' heels with red-colored soles have been widely distributed before the launch of Louboutin shoes in Japan.
In addition, the court found that there is not likelihood of confusion between Louboutin and the defendant's shoes on several grounds such as the high price of Louboutin product that would make consumers more careful when it comes to the selection and purchase of the product in object, which make unlikely that relevant consumers connect the defendant's shoes bearing the wordmark "EIZO" on soles with Louboutin. Same for the different material used by the parties.
Based on the above grounds, the court rejected the plaintiff's claims under the Unfair Competition Prevention Law and did not side with Louboutin.
In brief, since "it is reasonable to admit that the difference between the two products is sufficiently discernible on its own", the courts did not recognize it as being 'similar' or even 'well-known among consumers or purchasers' as required under Article 2, paragraph 1, sub-section 1 of Japan's Non-Competition Law.
This decision is significant in the way that show how different cultural background can lead to different perspective when it comes to recognition of intellectual property rights.
The credit to Louboutin for the use of the color red as the brand's trademark has been recognized in 50 countries, such as Australia, Canada, France, the European Union, India, Russia, Singapore, the United Kingdom, and the United States while not in Japan.
The reason can be found on the widespread recognition that it has been an ordinary business practice in the industry for many years to put red soles on high heel shoes.
In other words, in Japan most people do not associate red soles on high heels with Mr. Louboutin's products.
The article was originally published on HFG Law&Intellectual Property website: http://www.hfgip.com/news/ip-asia-no-infringement-louboutin-red-sole-japan
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