Case number: (2018) Jing Xing Zhong No. 2631. Court: Beijing High People’s Court. Judgment date: December 24, 2018. Trademark: G1031242.
The case marked a development in recognizing that a single colour used in a specified position may be eligible for trademark protection in China. It did not itself determine that the mark had acquired distinctiveness; that issue was remitted for reconsideration.
Case Background
In 2010, Christian Louboutin, the luxury brand established by the French designer in the 1990s, sought extension to China of its international registration for red applied to the sole of a shoe. The Trademark Office refused protection in October 2010 under Article 11, paragraph 1(3) of the Trademark Law for lack of distinctiveness. TRAB upheld the refusal, leading to administrative litigation.
The Beijing Intellectual Property Court set aside TRAB’s decision. It treated the mark as a three-dimensional sign comprising the high-heeled shoe shape and red sole, rather than the graphic mark identified by TRAB. Both Louboutin and TRAB appealed.
The High Court corrected the characterization of the mark but maintained the result requiring TRAB to reconsider the application.
Different Characterizations of the Mark
Louboutin: the mark is the red colour on the sole; the shoe outline is not part of it and only shows where the colour is applied.
TRAB: the ordinary high-heeled shoe shape and red sole together form a graphic mark.
First-instance court: the dotted shoe outline and red sole form a three-dimensional mark.
High Court: the outline only identifies placement. The mark consists of a single colour applied in a specified position.
Appellate Reasoning
Although this form of mark was not expressly listed in Article 8, the law did not expressly exclude it. TRAB had also not determined that it was a sign categorically incapable of registration. On reconsideration, TRAB had to assess distinctiveness in light of the evidence submitted during review and both court instances.
Article 8 allows registration of signs capable of distinguishing the goods or services of one person or organization from those of others, including words, devices, letters, numerals, three-dimensional signs, colour combinations and combinations of those elements.
