Red Sole Case and Position Trademark Refusal Overview

Co-Author: Roger Huang, Steven Dong

On December 24, 2019, the Supreme People’s Court handed down [2019] No. 5416 administrative ruling and dismissed the retrial application by the National Intellectual Property Administration (CNIPA). According to the effective judgment of 2nd stance, in this case, CNIPA shall re-determine whether the trademark No. G1031242 (hereinafter referred to as “Red Sole Trademark”) has distinctiveness. Though the Supreme People’s Court did not directly deliver a judicial opinion on whether to approve the registration of Red Sole Trademark, it is a step forward in judicial practice about the registrability of position mark.

Trademark No. G1031242

Note: the mark consists of the color reapplied to the sole of a shoe as shown (the contour of the shoe is not part of the trademark but is intended to show the positioning of the mark)

Refusal Review: TRAB holding that the Red Sole Trademark is a figurative trademark

In 2010, Christian Louboutin applied for an extension of territorial protection of his registered trademark No. G1031242 in China, but later in October 2010, the Trademark Office of China has refused the registration of this red sole trademark holding an opinion that Red Sole Trademark, a specific shade of red applied on soles, is lack of distinctiveness, citing the Article11.1.3 of the Trademark Law of China.

After reviewing the argumentation and evidence with substantial usage of the red sole trademark, the Trademark Review and Adjudication Board (hereinafter referred as TRAB) has then on 22 Jan 2015 made Decision on Refusal Review re No.G1031242 Figurative Mark (docket file #Shang-Ping-Zi [2015] No. 8356), explaining that the Red Sole Mark – composed of a particular shade of color and a common device of the heel and designated on goods of female heels – is rarely recognized by the public as a trademark identifying the origin of goods and thus deemed to the lack of distinctiveness; the evidence adduced by the applicant failed to prove that the mark at issue had acquired enough distinctiveness to be qualified as trademark via commercial use; and therefore dismissed the application.

1st stance: Beijing IP Court holding Red Sole Trademark is a 3D mark

Louboutin was dissatisfied with the Decision by TRAB and instituted a lawsuit to the Beijing IP Court later. On 20 Dec 2017, upon trial, the Court has made the decision that both parties decided to appeal at the same time, citing that Red Sole Trademark is a kind of 3D trademark and “expresses the contour of heels itself and colors partial area with red”.

2nd stance: Beijing High Court holding Red Sole Trademark as trademark applying specific color on the designated area.

During 2nd stance, after extraterritorial evidence of publication by WIPO being cured by translating, the Beijing High Court acknowledged Red Sole Trademark as a “trademark applying specific color on designated area” and canceled the contested Decision by TRAB regarding an error in the examined object. However, the Beijing High Court either leaves no comments on the lingering issue regarding the distinctiveness of Red Sole Trademark from 1st stance, in order to protect the procedural rights of the parties concerned.

Red Sole Trademark Case – a landmark for registrability of a position mark

In Red Sole Trademark Case, upon clarification by the Supreme Court, Article 8th of the Trademark Law shall include, without limitation to, exemplary items provided in the Article, and the Trademark Law in force should be read as “including but not limited” term. Apart from word, design, letter, numeral, three-dimensional symbol, a combination of colors, and sound, as well as a combination of the above which may serve as a trademark as explicitly provided in the law, non-listed position mark and other tangible and distinctive signs may also serve as one type of trademark in China.

Actually, the registrability of a position mark also was partially embodied in Trademark Examination Standard. In the light that the part of Formality Examination of Color-combination Trademark specifies that “use a dotted outline to indicate where the color is used and attach a trademark description”, there is precedent to follow that use a dotted outline to figure out designated position. Therefore, in the registration of the position mark, the dotted-outline description could leave it out of examination upon the 2D figurative mark and 3D mark.

Summary

The Red Sole Trademark case in China has lasted for almost one decade, and it is still not concluded. However, spaning from the Adidas’ three-stripe logo to the Red Sole Trademark case, there has been obviously more options for the registration of a position mark. With amendments toward the Trademark Law further covering types of 3D mark, sound, etc., it reveals the open attitude toward such trademark types in legislation. Until now, whether and how position marks must be determined is still in the spotlight.