Katie Graham is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

On December 26, 2022, the Japanese IP High Court dismissed an appeal from Christian Louboutin (“Louboutin”), a shoe designer known for its iconic red-bottom heels, in its action against Japanese shoe designer, Eizo Collection Co., Ltd. (“Eizo”), to shut down Eizo’s use of red soles on high-heeled shoes.

In May 2019, Louboutin sued Eizo under the Unfair Competition Prevention Law, seeking a permanent injunction against Eiko’s production of red-soled high heels and damages of approximately CAD 43,500. The Tokyo District Court ruled against Louboutin by finding red soles insufficient as a source indicator, and that the likelihood of confusion among consumers is therefore low. The IP High Court affirmed the judgment and placed particular emphasis on the to assess the likelihood of confusion:

1. The relevant consumers in the Japanese shoe market (women from their 20s to 50s) are likely to try on multiple shoes before purchasing ones that fit in a physical store;
2. The market can be divided into three categories: (i) luxury brand products, (ii) affordable brand products, and (iii) inexpensive no-name products;
3. The shoes in question, as well as most high-heeled shoes, bear a brand name or logo on the insole so that consumers can distinguish between trade sources; and
4. E-commerce websites post images of ladies’ shoes and identify the trade source for the respective goods in advertisements ().

While Louboutin’s products retail for and over and fall within the luxury brand market, Eizo’s shoes occupy the affordable or no-name brand markets, with an average retail price of JPY17,000 ($130). As such, the court ruled that, despite the resemblance of the colour of Louboutin and Eiko’s outsoles, the likelihood of confusion amongst consumers is low since each company occupies a different position in the market.

Relying on the fact that Louboutin is not the exclusive supplier of red-soled high heels in Japan and only 51.6% of targeted women in their 20s to 50s residing in major Japanese cities recognized Louboutin at the sight of a red-soled high-shoe, the IP High Court Louboutin’s assertion of its remarkable reputation amongst consumers. The court also took with Louboutin’s market research. The 3,149 individuals surveyed were luxury retail shoppers and were only presented with Louboutin’s products, not Eizo’s.

This loss for Louboutin follows several years of from the Japan Patent Office (JPO) and JPO Appeal Board to register its trademark for a colour mark consisting of a red (Pantone 18-1663TP) coloured in soles for use in high heels filed on April 1, 2015 (TM App no. ). In April 2015, Japan opened the gate for non-traditional trademarks, including colour, sound, and motion . As of November 2020, however, the JPO only registered out of 543 applications for colour marks. The JPO based on Article 3(1)(iii) of the Japan Trademark Law, stating that Louboutin’s colour mark lacks distinctiveness to be deemed as an indicator of source for Louboutin in the Japanese market.

(Alt Text: EIZO shoes with red soles; Source: ()

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Anita Gogia is a IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

On May 25, 2021 the Japan Patent Office (JPO) Nobuaki Kurokawa a trademark for his apparel brand named “CUGGL” for class 25 (clothing and footwear). This year, when the t-shirt design  for CUGGL was released, the Italian fashion brand Gucci tried to get the trademark cancelled.

Fast forward a few months, on July 26, 2021, Gucci filed an opposition against the “CUGGL” mark with the JPO. Gucci argued that CUGGL t-shirts would confuse customers because of the font and style of the design. Gucci cited of the Japan trademark law in support of their claim.

Gucci that Kurokawa obtained the trademark with malicious intent to take advantage of the luxury Italian brand’s goodwill and reputation as customers would recognize his design to say “GUCCI” even when they can only see the top half of the word. Even though half of the word “CUGGL” is covered with hand drawn paint, anyone familiar with Gucci’s brand might assume at first glance that the shirt says “GUCCI” underneath the paint.

Unfortunately for Gucci, its claim was not successful. As of July 12, 2022, the JPO found that the two brands were distinct and . Even though the decision makers Gucci’s popularity and reputation, they of a resemblance between Gucci and CUGGL based on visual, phonetic, and conceptual considerations. Overall, the low degree of similarly, according to the JPO, is not enough to accept that consumers would be confused between Gucci and CUGGL.

Kurokawa has other successful trademarks and pending applications for brands that potentially confuse consumers (for , “AZIDES” and “PAPAGORIRA”).

Some that the JPO’s decision against Gucci is a win because large companies have manipulated the law to prevent harmless parodies of their brands and the public would not be confused by such parodies. This decision illustrates that the result of a trademark infringement allegation is not so predictable in Japan as it may be in other jurisdictions.

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A History of Imitating Nintendo

Streetkart first ran into legal challenges back in 2017. From the similarity of the then company name “MariKar” and “Mario Kart” to renting Nintendo character costumes to wear while go-karting, Streetkart undoubtedly profited from its unofficial association with Nintendo’s infamous Mario Kart franchise. That year, the court ordered Streetkart to pay Nintendo ¥10 million ($97,000 USD) “.” Streetkart rebranded, changed its name, and described it’s experience as a “” in an attempt to distance itself from Nintendo. Nonetheless, the business continued to attract thousands of tourists from across the globe who were interested in the knock-off Mario Kart experience.

Copyright Infringement

Nintendo argued that Streekart violated . This protects businesses from unfair conduct including: causing confusion with another party's well-known goods and brand, misappropriation of another party's goods or business, selling counterfeit goods, and misuse of domain names. In consideration of these IP protection laws, Nintendo presented a strong argument against Streetkart and its profitable association with the Mario Kart franchise.

The gaming giant had claims against Streetkart before 2017. Nintendo continued to pursue Streetkart for explicitly using Mario Kart footage and audio clips in its promotional material, on its go-karts, and in its selection of costumes available for rental. More generally, the company marketed its services as an imitation Mario Kart experience.

Several other companies provide Mario-themed go-karting experiences, but Streetkart’s were the most popular, especially among internationals. Despite its rebranding efforts, Streetkart still lost the Supreme Court appeal, which upheld the trial ruling and resulted in an additional ($480,000 USD) fine. These heavy fines are likely to like Streetkart in the future.

Since Nintendo plans to build its own Mario Kart attraction at , formerly set to open last month, the multi-billion dollar corporation has unsurprisingly escalated its efforts to safeguard its franchise and intellectual property. By securing a win in the Supreme Court, Nintendo blue-shelled its competition, leaving Super Nintendo World as the sole destination for visitors looking for a real-life Mario-Kart experience.

Adele Zhang is an IPilogue Contributing Editor interested in the intersection between IP law and sports, and technology.

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Japanese broadcasters completed the switch to digitized terrestrial TV broadcasting at noon Sunday, July 24, ending the analog transmission in 44 prefectures, except in the three prefectures – Miyagi, Iwate and Fukushima – hit by the March 11 quake and tsunami, where the decided to put the switch off. Here the switch will take place at the end of March 2012.

Being aware that people nationwide have yet to prepare for the analog-to-digital, the Ministry of Communications has increased his staff to provide for technical help to the citizens. According to the broadcasting industry, fairly 100 thousand households haven’t bought essential equipment such as digital tuners and antennas yet. Furthermore, the Ministry of Communications distributed free digital terrestrial tuners to low-income families. Moreover, there are many unreported households that have refrained from making the transition, whether intentionally or for other reasons. Despite mass campaigning by the government and terrestrial broadcasters, there’s still concern that many senior citizens and those with disabilities have not made the transition.

Japanese analog broadcasting service began on February 1 1953 at 2 p.m. Although (Nippon Hōsō Kyōkai, �����貹��’s national public broadcasting corporation) beamed experimental television broadcasts in 1939, it wasn’t until more than 10 years later that regular TV programming started. The NHK opening program was the kabuki classic “Michiyuki Hatsune no Tabi”. The next day the inauguration of U.S. President Dwight D. Eisenhower was broadcasted. The first commercial broadcaster was Nippon Television Network Corp. and started its regular programming on August 28 1953, airing a baseball game live the next day. The first satellite broadcast was supposed to be a recorded message by U.S. President John F. Kennedy scheduled for the morning of November 23 1963.

As stated above, NHK is the public broadcasting corporation, but it is not the only Japanese broadcaster. Alongside to NHK there are five nationwide TV networks — , , , , — all of which are affiliated with national newspapers, except for NHK. NTV is affiliated with national daily , while TV Asahi is affiliated with its rival daily, the . Besides the national networks, there are also independent terrestrial commercial stations, not members of the national networks but forming together the Japanese Association of Independent Television Stations.

The first step towards the digitalization of TV transmission started in 2001, after the Diet – on July 25 – passed revisions to the Radio Law to change the frequency of analog broadcasts, providing a 10-year window for users to make the switch to digital.

The first digitalized programs were transmitted in 2003 in Tōkyō, Ōsaka and Nagoya and nationwide in 2006. Until July 24th, 12 p.m., analog TV and digital TV have been simultaneously broadcast.

As in Italy and in other relevant countries, also Japan decided to switch from analog to digital since digital broadcasting provides higher quality images and sound. Moreover, broadcasters can transmit data in a compressed format using only two-thirds of the bandwidth needed for analog broadcasting, meaning that the extra bandwidth can be used for new types of broadcasting.

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