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The Beijing High Court Opens the Way to the Registration of Position Trademarks

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The Beijing High Court stated that the applied mark is not a 3D trademark, but is a single-color trademark 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 trademark.

 

French high-end footwear brand Christian Louboutin is celebrating victory over a favorable decision handed down by the Beijing High Court in a trademark administrative proceeding that could help pave the way for the registration of its signature red sole trademark in China.

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

The China Trademark Office (CTMO) flatly refused the trademark 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 trademark.

In February 2015, Christian Louboutin appealed before the Beijing IP Court, who, on October 20, 2017, ordered the TRAB to re-make its review decision based on a different characterization of the mark. The mark was no longer defined as a logo; it was defined as a three-dimensional trademark, a “high-heeled shoe with the sole colored in red”. Likewise, 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 trademark 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 trademark, and are only used to indicate that a certain red color is placed in a certain position of the products.

On December 24, 2018, the Beijing High Court agreed with Louboutin’s analysis and stated that the applied mark is not a 3D trademark, but is a single-color trademark 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 trademark.

The Court ordered the TRAB to reassess the distinctiveness of the red-sole trademark on the basis of this new characterization. However, the Court did not give any recommendation as to the distinctiveness of the trademark.

The TRAB will have to say whether the presence of a certain color red on the sole of the Louboutin shoes is sufficiently distinctive to be registered as a trademark. In its first decision, the TRAB had refused to admit the distinctiveness of the mark, even on the basis of its extensive use, but this decision was obviously due to the fact that it was looking at a mark representing a shoe, without taking into account of the dotted lines.

This time, the dotted lines should fully play their role. The TRAB will have to examine the evidence of use provided by Christian Louboutin in the new “position trademark” context. Christian Louboutin may reasonably expect that the TRAB will recognize the distinctive character of the red sole.

 

Contributors: Mr. Paul RANJARD & Ms. JIANG Nan