Japanese Court 'Counterfeit' Lawsuit Controversy... Why Dr. Martens Won and Louboutin Lost

Dr. Martens 'Yellow Stitch' and Louboutin 'Red Sole' Counterfeit Lawsuits
Court Rulings Diverge Over Design Originality

Controversy has arisen in and outside Japan following the results of counterfeit lawsuits filed by British fashion brand Dr. Martens and French brand Christian Louboutin against Japanese companies that copied their product designs. While Dr. Martens won the lawsuit, Christian Louboutin lost. In the Japanese judiciary, although both cases involved similar counterfeit lawsuits, Dr. Martens was recognized for concretely establishing what constitutes the brand's 'uniqueness' and thus won, whereas Christian Louboutin failed to do so and lost.

On the 14th, Asahi Shimbun reported on the results of the Dr. Martens lawsuit held last month at the Tokyo District Court, as well as the lawsuit involving Christian Louboutin in the same month. Dr. Martens is characterized by the yellow stitching on the part where the sole is joined. Dr. Martens filed a lawsuit based on Japan's Unfair Competition Prevention Act against a company in Chiba Prefecture that copied the design of the 1460 boot line featuring this characteristic.

According to Japan's Unfair Competition Prevention Act, sales of counterfeit products that may cause confusion or misunderstanding can be prohibited. This applies when the product's features can be said to be a unique mark of a specific business operator. The key issue is whether the design has been exclusively used over a long period and is widely recognized by consumers as a feature of that business operator.

Dr. Martens argued that intentionally exposing yellow thread on the outside and the combination of black leather with bright yellow thread is a unique feature.

Product photos for which UK Dr. Martens raised design similarity claims. The left is Dr. Martens' product, and the right is the defendant's product. (Photo by the Supreme Court of Japan)

In March, the Tokyo District Court ruled in favor of Dr. Martens, stating, "Each stitch is exposed for a long length, making it imprinted in consumers' minds." The court recognized that since the 1460 line was launched in Japan in 1985, there have been no similar products from other brands sold, and that the design was exclusively used by Dr. Martens. Furthermore, the court judged that this feature is recognized as Dr. Martens' product mark because it can be confirmed in advertisements, magazines, and social networking service (SNS) product introductions.

The defendant argued that "stitching is basically exposed on shoes made with similar manufacturing methods," but the court dismissed this, stating, "Dr. Martens' feature is based on the color combination and the degree of stitch exposure."

As of 2021, counterfeit products were priced around 5,000 yen (approximately 49,000 KRW) per pair, differing from Dr. Martens, which sells for about 26,000 yen (approximately 255,000 KRW). However, the court ordered a sales ban and product disposal, stating, "Both products are sold online, and consumers purchase based on limited information such as photos, which can cause confusion."

However, in the same month, the claim for a sales ban filed by Christian Louboutin against a company in Saitama Prefecture was dismissed. Christian Louboutin's shoes are characterized by red soles, and the Saitama company sold similar red-soled high heels, prompting a sales ban request in March last year. The Tokyo District Court dismissed the claim, stating, "Red soles are a common design."

Design of counterfeit product claimed by Christian Louboutin. The upper design is from the company alleging the counterfeit, and the lower is a Christian Louboutin product. (Photo by Japan Supreme Court)

Christian Louboutin appealed, and the case was assigned to the Intellectual Property High Court of the Tokyo High Court. However, the court dismissed the claim, stating, "Even if the red color is similar to Christian Louboutin's, there is no risk of confusion." Christian Louboutin's shoes cost at least over 80,000 yen, while the opposing product is priced around 16,000 yen. Additionally, Christian Louboutin shoes are sold only in department stores handling luxury goods, whereas the opposing company's products are sold online, distinguishing the sales channels.

Previously, Christian Louboutin also registered the red shoe sole as a trademark in Japan, but the Intellectual Property High Court ruled, "Product colors should be freely used by anyone. In the case of a single color, unless it has outstanding product identification, it is not possible. The recognition of the red sole is limited," and did not approve it. The company did not appeal further, and the ruling was finalized last month.

Ultimately, the two conflicting rulings sparked discussion in Japan about "what constitutes design originality." Ryutaro Nakagawa, a legal expert in intellectual property law, analyzed, "To seek design protection, one must specifically identify and claim the features. Dr. Martens claimed not only the color of the thread but also the color difference of the leather and the intentional exposure of the stitching as features, whereas Christian Louboutin only claimed that the women's high heel sole is red."

Lawyer Nakagawa added, "The Unfair Competition Prevention Act can restrict free competition, and if recognized in court, it can have a significant chilling effect on third parties other than the defendant, so courts tend to make careful judgments."

This content was produced with the assistance of AI translation services.