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Discussion over the Protection of Position Trademarks in China from the "Red Sole" Trademark Case
date: 2019-01-10

The Beijing High Court decided the administrative litigation (2nd instance) concerning the TRAB review of refusal for the mark, louboutin.gif (IR No. 1031242; hereinafter referred to as “Red Sole Trademark”) on December 24, 2018.

The Red Sole Trademark was designed in 1990s by Christian Louboutin, a famous French designer of high-heeled shoes, and has become a well-known fashion brand around the world.

Christian Louboutin filed with WIPO the international registration for the mark, louboutin.gif, designating China, on April 15, 2010, covering the goods, “ladies footwear,” in Class 25.  The extension of the mark in China was rejected by the China Trademark Office (“CTMO”) on the ground that “the mark is devoid of any distinctive character in respect of the designated goods.”  The applicant filed the TRAB review of refusal before the Trademark Review and Adjudication Board (“TRAB”) but the TRAB affirmed the CTMO’s rejection based on Article 11.1.3, reasoning that the mark, which is comprised of a common high-heeled shoe shape and the single red color applied to the shoe sole, lacks distinctiveness and the relevant consumers may not treat it as a trademark to distinguish the source of goods. The evidence submitted is not sufficient to prove that the mark has acquired distinctiveness to be registered through commercial trademark use over the designated goods.

During the administrative litigation (1st instance), the Beijing Intellectual Property Court (“Beijing IP Court”) overruled the TRAB decision.  The Beijing IP Court held it wrong that the TRAB identified the mark as a device mark.  Instead, the mark should be considered as a 3D mark, with the dotted line framing the shape of the goods of high-heeled shoes and with the red color applied to the sole of the shoe.

Both the applicant and the TRAB were dissatisfied with the decision of the Beijing IP Court and appealed to the Beijing High Court.  After examination, the Beijing High Court affirmed the fact that the mark was filed through the Madrid System before WIPO and designated China on April 15, 2010.  According to Article 44 of the Regulations for Implementation of the China Trademark Law, the object to be examined should be based on the published information on the WIPO Trademark Gazette.  According to the WIPO-ROMARIN-Filing Particulars of International Registrations for the instant mark, the mark 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 it is for illustration only).  Thus, the mark is comprised of the red color in the designated position, and is a mark of single color with restriction over the position of the color on the goods.  Thus, the Beijing High Court held that both the TRAB and the Beijing IP Court were wrong in the identification of the nature of the mark and its composed elements, and maintained the decision of the Beijing IP Court.

The statement over the registrability of a single-color trademark with restriction over the position of the color on the goods in decision of Beijing High Court (administrative litigation, 2nd instance) deserves our close attention.  According to it, though the mark is a single-color trademark with restriction over the position of the color on the goods and was rejected by the TRAB on the ground that the mark lacks distinctiveness according to Article 11.1.3, it is not a sign that is prohibited by the China Trademark Law.  According to Article 8 of China Trademark Law, any sign that distinguishes the goods of a natural person, legal person, or other organizations from those of others, including any word, device, letter, number, three-dimensional sign, color combination, sound and combination thereof, may be registered as a trademark.  Though the mark does not belong to the situations explicitly described under Article 8 of China Trademark Law, it is not explicitly eliminated from the situations where a sign can be registered as a trademark, either.  Therefore, when re-examining the case over the distinctiveness of the mark, the TRAB should take the evidence submitted by the applicant during the review stage and the administrative litigation (1st and 2nd instances) stage into consideration.

The Red Sole Trademark case is related to the position trademark which is not clearly defined in the China Trademark Law.  The position mark is generally considered as a sign comprised of a 3D device, 2D device, color, or the combination of the aforesaid elements, and such sign is designated to be used in the particular position of the designated goods.  We can see from the Red Sole Trademark case that the Court is now open in the interpretation of Article 8 of China Trademark Law over the elements that could be used as a trademark.  The China Trademark Law does not and cannot list all of the elements that can be registered as a trademark, and the examination over the elements of marks should not be restricted by the types listed in the China Trademark Law.  Therefore, like the position mark in this case, if you can provide sufficient use evidence to prove that the mark is inherently registrable or the mark acquires distinctiveness to be registered as a trademark, and the mark then could function as a trademark to distinguish the source of goods or services, you will have chance to obtain the registration of the position mark in China.