Since Christian Louboutin first set up shop in France in the early 1990’s, the man and his brand have found fans in sky-high stiletto-wearers and designer sneakers, alike, appeared on nearly every major red carpet across the globe, and generated demand that see them sell more than 1 million pairs of its pricey, red-soled footwear per year. In furtherance of its quest for global domination, the famed footwear brand has been fighting to register its red sole in China, a decade-long move that (if successful) will enable it to claim exclusive trademark rights in the sole, and prevent others from selling shoes with a similar sole.
In furtherance of its attempt to amass trademark rights (and registrations) in its famous red shoe sole, including in the U.S. (as we saw play out in the Louboutin v. YSL case), Mexico, Denmark, Indonesia, Switzerland, India, and Singapore, among other countries, Louboutin set its sights on China in the spring of 2010. At the heart of its quest for exclusive rights? The argument that when consumers see a red soled shoe, they link that shoe to a single source.
Filing a territorial extension in connection with a United Kingdom trademark application for “the color red (Pantone No. 18.1663TP) applied to the sole of a shoe,” Louboutin sought registration with the China Trademark Office (“CTO”).
It was not be long before the CTO pushed back, and refused to register the mark on the basis that it consists not just of the position of a red sole on a high heel shoe, as Louboutin claimed, but of the design of a high heel shoe, itself, with a red sole. Such a mark, the CTO held, “lacks distinctiveness,” meaning that it does not, on its own, serve to identify the Louboutin brand to consumers. As such, the mark was not eligible for registration.
Following unsuccessful appeals before China’s Trademark Review and Adjudication Board (“TRAB”), and the Beijing Intellectual Property Court, both of which found that Louboutin’s “3-D trademark” for a “high-heeled shoe with the sole colored in red” was ineligible for registration as a trademark, Louboutin took its case to the Beijing High Court.
Unlike the lower court and trademark bodies, the Beijing High Court sided with Louboutin. In a decision in December 2018, the court found that the trademark at issue here is not a 3-D mark that includes the design of a shoe. It is, instead, a single color and its placement on the bottom of a shoe, not the shoe as a whole.
According to the court’s decision, this specific arrangement “is not excluded by the law from being registered as a trademark,” as long as the consuming public has come to associate the red shoe sole with a single source, something that Louboutin can establish by showing that it has been using the mark on goods in China for a while, that it has advertised its mark there, and consumers have, in fact, come to associated the red sole with a single source.
The matter was sent back to the TRAB for addition determinations, but in the process, Louboutin hit a snag when the trademark body ultimately sought a rehearing by the Supreme People’s Court, asserting that China’s trademark law does not provide for protection for “a single color designated to be applied at a certain position,” and even if it did, Louboutin has failed to establish by way of the evidence it submitted that its red sole has acquired the requisite distinctiveness to enjoy trademark protection in China.
But not all is lost for a Louboutin. In fact, in a recent decision, the Supreme People’s Court upheld the Beijing High Court’s finding, confirming that “a single color designated to be applied at a certain position” is, in fact, a registerable type of trademark, marking a notable victory for Louboutin, according to Zhu Zhigang, a trademark attorney at Beijing-based Marques.
Still up for determination before the TRAB: whether Louboutin has sufficiently established that the red sole mark has amassed the requisite level of secondary meaning in order to operate as a trademark. In other words, Louboutin has to show – via evidence of its length of use of the mark, exclusivity in the market, third-party media attention, sales success, etc. – that consumers have come to link its use of color to a single source.
Zhigang says that the decision from the Supreme People’s Court, which follows from a decade-long back-and-forth over the red sole mark, “could help pave the way for the registration of its signature red sole trade mark in China,” but it is still not likely to be an open-and-shut case even at this point. He says that “it may logically be expected that the TRAB will maintain its position” that Louboutin’s red sole has not acquired the necessary distinctiveness, in which case, the matter will go back before the courts for a final determination.
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