French high-end footwear brand Christian Louboutin is celebrating victory over a favourable decision handed down by the Supreme People’s Court (SPC) in a trade mark administrative proceeding that could help pave the way for the registration of its signature red sole trade mark in China. ZHU Zhigang of the MARQUES China Team reports

The famous red sole trademark consists of “the color red (Pantone No. 18.1663TP) applied to the sole of a shoe as shown in the representation (the outline of the shoe is not part of the mark but is intended only to show the placement of the mark)”.

Christian Louboutin registered the sign in the United Kingdom on 15 November 2007 and on 15 April 2010 filed an application for international registration covering “ladies footwear” in class 25, with territorial extension to China.

The China Trademark Office (CTMO) flatly refused the trade mark on the grounds that “the mark is devoid of distinctiveness”.

The Trademark Review and Adjudication Board (TRAB) upheld the refusal, quoting Article 11.1(3) of the PRC Trademark Law: “…other signs that lack distinctiveness…shall not be registered as trademarks”. In its decision, the TRAB characterized the mark as a “device mark”, a logo, and ruled that this device representing a shoe is not distinctive per se and that it has not acquired distinctiveness through commercial use. The TRAB did not accept the concept of dotted lines not being part of the trade mark.

Louboutin appeals

In February 2015, Christian Louboutin appealed before the Beijing IP Court which, on 20 October 2017, ordered the TRAB to re-decide based on a different characterization of the mark. The mark was no longer defined as a logo; it was defined as a three-dimensional trade mark, a “high-heeled shoe with the sole colored in red”. The Beijing IP Court refused to take into account the concept of dotted lines.

Christian Louboutin appealed before the Beijing High Court, insisting that the particulars of the trade mark as shown in the WIPO database specify that the shape of the high-heeled shoe (in dotted line) and that of the sole are not components of the trade mark, and are only used to indicate that a certain red colour is placed in a certain position of the products.

On 24 December 24 2018, the Beijing High Court agreed with Louboutin’s analysis and stated that the applied mark is not a 3D trade mark, but is a single-colour trade mark designated to be applied at a specific position, adding that such type of sign is not excluded by the law from being registered as a trade mark.

SPC decision

The TRAB disagreed with this last comment of the Beijing High Court and filed a retrial application with the SPC, claiming that Article 8 of the Trademark Law, which enumerates the types of signs that may be registered as trade marks, does not allow the registration of any type of sign (even if the list ends with the term “etc”). According to the TRAB, if any type of sign not expressly mentioned in Article 8 could be registered, this would have negative consequences. The TRAB added that even if a single colour were allowed to be registered, the Louboutin red sole lacks inherent distinctiveness, and the evidence submitted cannot prove that it has acquired distinctiveness through use.

On 24 December 2019, the SPC reaffirmed the Beijing High Court decision on the registrability of “a single color designated to be applied at a certain position” and ordered the TRAB to assess the distinctiveness of the red-sole trade mark of Christian Louboutin on the basis of the evidence submitted during the first and second instance. The SPC did not give any further instruction as to whether the applied trade mark was, effectively, distinctive: this was for the TRAB to decide.

Strict interpretation of Article 8 rejected

The first comment is that the argument of the TRAB concerning a restricted interpretation of Article 8 has been rejected by the SPC. It will not be possible to refuse a trade mark for the only reason that such type of sign is not expressly provided in the law. As the SPC said in substance: what is not expressly prohibited should be allowed.

Regarding the distinctiveness of the red sole, the TRAB, in its argument before the SPC, gave its opinion that even considered as a “single color to be applied at a certain position”, the evidence of use provided by Christian Louboutin was insufficient to prove the distinctiveness of the mark. The issue has now become a point of fact, not anymore a point of law. It may logically be expected that the TRAB will maintain its position, in which case the final assessment will probably depend on the courts.

ZHU Zhigang is a partner and attorney-at-law with Wanhuida Law Firm, and a member of the MARQUES China Team.