Dr. Martens wins against counterfeit, but the distinctiveness of the “yellow welt stitch” alone is denied

On November 9, 2023, the British footwear company Airwair International Limited (hereinafter “Airwair”), known for its Dr. Martens brand and shoes with the yellow welt stitch, won a case at the IP High Court (IP High Court Case No. 2023 (Ne) 10048 (in Japanese)) where they were fighting for an injunction under the Unfair Competition Prevention Act (hereinafter “UCPA”) against a Japanese footwear company MD Planning Co., Ltd. (hereinafter “MDP”). Airwair alleged that MDP’s boots (the two boots shown on the right below) were similar to and caused confusion with Airwair’s well-known “Dr. Martens 1460 8-Eye Boot” (hereinafter, “Dr. Martens Boot”), and therefore MDP’s acts would fall under Article 2, paragraph 1, item (i) of the UCPA, which prohibits the sale, etc. of goods that use the same or similar indication of another person’s well-known indication of goods and will cause confusion to customers.

(Source of photos: Tokyo District Court decision Case No. 2020 (Wa) 31524)

The lower Tokyo District Court had judged in favor of Airwair on March 24, 2023 (Tokyo District Court Case No. 2020 (Wa) 31524), considering the “bright yellow welt stitch, clearly visible in contrast with the black welt” as a well-known indication of Airwair. The district court ruled that MDP’s Boot No. 2 had a similar yellow welt stitch on a black welt, and would likely cause confusion among customers. Trademark infringement was found for MDP’s Boot No. 1, which had some text on a heel loop that was considered similar to Airwair’s trademark. Thus, only MDP’s Boot No. 2 was considered in the decision regarding the UCPA. MDP appealed to the IP High Court.

The IP High Court agreed in conclusion with the Tokyo District Court, but their reasoning was different. The IP High Court did not consider the yellow welt stitch itself as a well-known indication of Airwair, but considered the “entire shape” of Dr. Martens Boot, including the (a) yellow welt stitch, (b) sole edge, (c) heel loop, (d) sole tread pattern, (e) slanting outsole, (f) round toe, (g) puritan stitch and (h) 8 shoelace holes of Dr. Martens Boot (and in particular the features (a)-(c)) to be the well-known indication of Airwair. The IP High Court further mentioned that upon determining the similarity of the boots, the (a) yellow welt stitch, which is the most prominent feature of Dr. Martens Boot, should be given the most weight, but other features (b)-(h) should also be collectively considered. Based on this, the IP High Court found MDP’s Boot No. 1 to be a dead copy of Dr. Martens Boot, and MDP’s Boot No. 2 (which had a different heel loop) to be similar to Dr. Martens Boot. The IP High Court also took the view that confusion was obvious because of the high similarity of the boots.

Separately from but concurrently with the injunction case, Airwair was also seeking trademark registration for its yellow welt stitch, the mark filed in the format below (it is a so-called “position mark” which specifies the place to affix the mark; the black broken lines only show an example of a shoe and do not form part of the mark).

(Source of image: J-Plat Pat database)

Shapes and colors of goods are basically considered to lack distinctiveness as a trademark, so Airwair had to prove “acquired distinctiveness” through use and they filed abundant evidence to show that their shoes with yellow welt stitch were well-known, such as sales figures, advertisements, and market surveys. However, on August 10, 2023, the IP High Court rejected Airwair’s appeal and denied the trademark registration (IP High Court Case No. 2023 (Gyo-Ke) 10003 (in Japanese)). They decided that from the evidence produced, the yellow welt stitch of Airwair’s shoes may be considered well-known and distinctive to a considerable degree, but only on “black” welt and outsole, not on any kind of welt and outsole such as yellow or beige welts and outsoles. Since the mark filed with the JPO did not identify the color of the welt and outsole, the JPO considered that the mark overall could not be found to have acquired distinctiveness.

The IP High Court’s decision in August on the distinctiveness of the trademark seemed to be in line with the Tokyo District Court’s decision in March where the “bright yellow welt stitch, clearly visible in contrast with the black welt” was found to be the well-known indication of Airwair. Airwair might have considered filing a trademark registration for the “yellow welt stitch on a black welt and outsole,” but now with the IP High Court’s decision in November which considered only the “entire shape” of the Dr. Martens Boot as the well-known indication of Airwair, such possibility seems to have become low.