Red Bottom Heels: The Trademark Dispute

by Micah Kindred, Associate Member, University of Cincinnati Law Review Vol. 91

I. Introduction

When someone mentions “red bottom heels,” the famous Christian Louboutin pumps with bright red soles probably come to mind. Louboutin and red soled heels are synonymous in the world market.1Christian Louboutin is Part of the BOF 500, The Business of Fashion (2022), https://www.businessoffashion.com/community/people/christian-louboutin. However, Japan recently rejected the fashion house’s trademark application for high heels with soles of a specific color red, which shows just how difficult it can be to trademark a color in some countries.2Ivy Choi, Christian Louboutin Failed to Register Red Sole Trademark in Japan, Asia IP (Aug. 10, 2022), https://www.asiaiplaw.com/article/christian-louboutin-failed-to-register-red-sole-trademark-in-japan. Currently, there is no international consensus on the ability to trademark color. This article will explore the Louboutin trademark application and appeal in Japan and the impact it may have regarding trademarks on individual colors. Part II will provide background on trademarking a color and Louboutin’s red sole trademarks. Part III will discuss the impact of the Appeal Board of the Japan Patent Office’s rejection of Louboutin’s red sole trademark. Part IV concludes with the current state of trademarking a color in Japan and this decision’s potential effects.

II. Background

Trademarks are granted for certain aspects of a brand that distinguish it from other brands, allowing consumers to identify the source of the goods or services.3Michael Bernet, Can You Trademark a Color, IPWatchdog (July 14, 2018), https://ipwatchdog.com/2018/07/14/can-you-trademark-a-color/id=99237. Trademarking colors has been allowed in the United States since 1995.4Id. Brands like UPS, T-Mobile, Target, Tiffany and Co., and Home Depot have trademarked single colors as a way to further protect their brands.5Aleksi Tzatzev, 10 Colors That Might Get You Sued, Business Insider (Sept. 29, 2012), https://www.businessinsider.com/colors-that-are-trademarked-2012-9. While many brands have taken advantage of this opportunity, trademarking a color or color scheme can be tricky. 

In the United States and many other countries, trademarking a color or color scheme has the same requirements as other trademarks: the trademark must serve a source identification purpose and not be merely decorative or utilitarian.6Bernet, supra note 3. Color trademarks, however, also must prove that the color or color scheme has secondary meaning.7Id. This can be, and often is, a high bar for brands to prove. Establishing secondary meaning basically means that although a color or other mark is not inherently distinct, through use by the applicant, the mark has become effectively synonymous with the applicant.8Secondary Meaning Trademark: Everything You Want to Know, UpCounsel, https://www.upcounsel.com/secondary-meaning-trademark (last visited Feb. 5, 2023). Secondary meaning is often shown by proof of significant advertising by the applicant using the color and/or “consumer surveys reflecting that a high degree of relevant consumers associate that particular color or combination with the applicant.”9Bernet, supra note 3.

Like with all trademarks, another important consideration when applying for a color trademark is that the color cannot serve a functional purpose.10Id. This can present an issue when applying for a color trademark in particular because “protection may be denied if the color indicates a characteristic of the good or service, such as its size, strength or capacity.”11Id. This may seem easy to overcome, but the examples prove otherwise. Some color marks that were denied trademark protection include: “amber-colored mouth wash, because the color indicated the flavor;” “purple sandpaper, because the color signified the grit size of the abrasive;” and “pink ceramic hip implants, because the pink color was a natural by-product of the devices’ components.”12Id. These examples show that even a minute link between the color and the functionality of the product can be grounds for denying trademark protection.

Other countries, like China, are much stricter on color trademarks, completely rejecting any trademark application for a single color.13Amy Hsiao, Protecting Color Trademarks in Asia, IPWatchdog (June 3, 2022), https://ipwatchdog.com/2022/06/03/protecting-color-trademarks-asia/id=149403. China’s National IP Administration maintains that allowing single color trademarks grants too much power to the owner of that trademark to a point where that power could disrupt the market.14Id. Then there are countries that are somewhere between the United States’ and China’s positions, like Japan and Korea. Both Japan and Korea allow single color trademarks; however, Japan has yet to grant one.15Id.

Despite the difficulty in obtaining a color trademark, many brands attempt to get protection on colors.16Tzatzev, supra note 5. Louboutin is one of these brands, as it is best known for its red soled high heels. The brand has obtained several trademarks on its distinctive red soles in fifty countries, including the United States, Australia, Canada, France, India, Russia, Singapore, and the United Kingdom.17Silvia Capraro, [IP Asia] No Infringement for Louboutin’s Red Sole in Japan, HFG Law & Intellectual Property & Mondaq (June 29, 2022), https://www.mondaq.com/trademark/1206830/ip-asia-no-infringement-for-louboutin39s-red-sole-in-japan. Although Louboutin has obtained significant protection on this element of its brand, one country has rejected Louboutin’s application to trademark the iconic soles: Japan.18Ivy Choi, Christian Louboutin Failed to Register Red Sole Trademark in Japan, Asia IP (Aug. 10, 2022), https://www.asiaiplaw.com/article/christian-louboutin-failed-to-register-red-sole-trademark-in-japan.

III. Discussion

The Japan Patent Office (“JPO”) originally rejected Louboutin’s trademark registration for its red soled heels in 2015.19Id.  Following this rejection, Louboutin filed an appeal with the JPO’s Appeal Board.20Id. In June 2022, the result of that appeal was released with the JPO once again rejecting Louboutin’s mark.21Id. The JPO considers two main factors when deciding on the registrability of a single color mark: acquired distinctiveness of the color by substantial use as a source indicator and “balancing unfair restraint to competitors with benefits to brand owner if granted protection to the single colour mark.”22Id. The JPO relied heavily on the second factor in the Louboutin appeal.23Id.

The Appeal Board’s result likely stems from Louboutin’s lawsuit against Eizo, which is a Japanese footwear manufacturer.24Capraro, supra note 17. Louboutin sued Eizo over its selling of women’s shoes with red rubber soles in 2018.25Id. Louboutin claimed the color on the sole misled consumers about the source of the shoes and that Eizo was infringing on Louboutin’s intellectual property right under Japan’s Unfair Competition Prevention Law.26Id. The court ruled in favor of Eizo citing the wide distribution of women’s heels with red soles in Japan prior to Eizo’s shoes.27Id. The court also stated that there was not a likelihood of confusion between Eizo’s shoes and Louboutin’s shoes because Louboutin’s high prices would make consumers more careful such that they would notice the differences between Louboutin’s shoes and Eizo’s shoes.28Id.

The JPO likely used the Eizo case to develop its argument against Louboutin’s trademark. The JPO focused on balancing the unfair restraint of competitors in Japan, like Eizo, and the benefit Louboutin’s trademark would provide.29Capraro, supra note 17; Choi, supra note 18. Because many companies in Japan, like Eizo, utilized red soles on women’s high heels, the court found that red soles on women’s high heels were “an ordinary business practice in the industry for many years.”30Capraro, supra note 17; Choi, supra note 18. Through the balancing test, the JPO determined that granting Louboutin a trademark for red soled high heels would be an unfair restraint on competitors because using red on the soles of high heels was “an ordinary business practice.”31Capraro, supra note 17; Choi, supra note 18.

Although the JPO rejected Louboutin’s trademark registration, the office holds the position that “registration is not permitted in principle for trademarks consisting of only a single color. However, if the use proves that the distinctiveness is generated, it will be registered.”32Takaaki Kimura, Handling Of “Trademark of Color (One Color) Only” In Japan. What Is the Latest Progress of the Japan Patent Office Louboutin Shoe Case?, Kimura & Partners & Mondaq (May 6, 2021), https://www.mondaq.com/trademark/1058298/handling-of-trademark-of-color-one-color-only-in-japan-what-is-the-latest-progress-of-the-japan-patent-office-louboutin-shoe-case. Given this position, the JPO seems to require a color more distinctive than Louboutin’s world famous red to obtain a color trademark in Japan. This is likely a very high bar, which most brands will not be able to meet. With this decision, Japan may be telling the world that single color trademarks are off the table for now, even though its official position is that they could be allowed. This does not mean that knockoff brands will be able to run rampant, but if a brand does not have significant popularity in Japan, the JPO may not issue protection. So, companies seeking trademark protection in Japan should be aware that having worldwide popularity likely does not mean much if that popularity and recognition is not just as significant in Japan.

IV. Conclusion

The Appeal Board of the Japan Patent Office’s rejection of Louboutin’s red sole trademark shows just how difficult trademarking a color can be in some parts of the world. While Japan is one of the countries that lies somewhere in the middle, not allowing all types of color trademarks and not rejecting all color trademarks, the Louboutin rejection proves that to trademark a color in Japan, a company has a high bar to reach. While some countries are much more open to trademarking a color, Japan has made it clear that trademarking a single color may not be as easy there. Finding a color that is more distinctive than Louboutin’s red on the sole of a pair of heels is quite the hurdle, so it seems Japan may have shut down any single-color trademarks, at least for the near future.

Cover Photo by Birgith Roosipuu on Unsplash

Author

  • Micah Kindred graduated from the University of Louisville in 2021 with a degree in Computer Science and Engineering with a minor in Business Management. Micah spent her undergraduate co-ops working in software development, enterprise architecture, and data science. Micah hopes to pursue a career in patent and corporate law after law school.

References

Up ↑

Discover more from University of Cincinnati Law Review Blog

Subscribe now to keep reading and get access to the full archive.

Continue reading

Skip to content