16 January 2020

SPC first confirms the registrability of “the color red applied to outsoles” in the retrial of the “Red Sole” trademark administrative dispute

On December 24, 2019, the Supreme People’s Court (“SPC”) rejected a petition for retrial filed by China National Intellectual Property Administration (“CNIPA”) in its ruling over the administrative dispute between Christian Louboutin, a famous French fashion brand, and the CNIPA over the “Red Sole” trademark. The SPC affirmed the final judgment issued by the Beijing Higher People’s Court, which ruled that although the constituent elements of the disputed trademark were not specifically listed under Article 8 of the PRC Trademark Law, they were not excluded from the situations listed in the provision. Hence, the SPC ruled that the “Red Sole” - a single-color trademark applied to a specific position - was registerable under the law. This is the first time that the SPC interprets Article 8 as an “open-ended” provision, and a milestone for registration and protection of non-traditional trademarks in China. This is also a major victory for Christian Louboutin, which is critical to protect its brands in China and strengthen its global trademark portfolio. 

Mr. Christian Louboutin is a famous shoes designer and the founder of the namesake brand. Mr. Louboutin has been using the red color on outsoles of the shoe products he designed since 1992, and red outsole has been the most distinctive feature of Christian Louboutin branded high-heels ever since. Mr. Louboutin has obtained registrations for the “Red Sole” in many jurisdictions. 

Mr. Louboutin filed a territorial expansion application based on an international registration with the registration number 1,031,242 with China Trademark Office (“CTMO”) in 2010. The application was rejected for lack of distinctiveness by the CTMO, and the refusal decision was affirmed by PRC Trademark Review and Adjudication Board (“TRAB”). Mr. Louboutin later appealed to Beijing Intellectual Property Court (“Beijing IP Court”). Beijing Higher People’s Court, the appellate court, ruled that the “Red Sole” is a “single-color trademark applied to a specific position”, and is registerable and protectable under the PRC Trademark Law. Beijing Higher People’s Court also ruled that CTMO’s examination on an application based on an international registration should be subject to the registration information published by WIPO. The CNIPA then filed a petition for retrial with the SPC. The SPC finally rejected the petition and affirmed the Beijing Higher Court’s conclusion on the registrability of a “single-color trademark applied to a specific position”.

KWM represented Christian Louboutin from the first-instance proceeding before the Beijing IP Court to the defense of the retrial petition filed by the CNIPA. KWM team innovatively collected and organized the evidential exhibits related to distinctiveness of the “Red Sole”, and made strong arguments on the registrability of the “single-color trademark applied to a specific position” and the necessity to protect the “Red Sole” trademark based on thorough research on current theories of the trademark law and precedents in different jurisdictions. The SPC decision ends the long-time controversy over the registrability issue for the “Red Sole” and it is a significant progress on the way to get the “Red Sole” registered to protect Mr. Louboutin’s reputation accumulated through years of his efforts on building his brand. 

In this case, KWM team is led by partners Xu Jing and Jiao Hongbin.

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