The court made a decision in Louboutin’s favour over red sole decoration dispute on 13rd September 2022. According to the decision, a red sole of shoes could amount to ‘a label identical or similar to the name, packaging or decoration with certain influence among the relevant public’, which is regulated and protected under China’s Anti-unfair Competition Law. The defendant is consequently liable to pay compensation of around £623.3 million and legal expenses of around £55,455.
The evidence which has convinced the court includes sale record of the footwears bearing a red sole in mainland China since 2011, sale channels and media marketing regarding those products in many popular cities of the country, as well as a sale volume equivalent to £112.2 million for its footwears. Those materials prove that red sole decoration has won high market reputation and could be served to distinguish a single source of the products in accordance with Article 6(1) of the Anti-unfair Competition Law.
Although bearing in mind that, Louboutin is still on the way to make this signature design registered under Chinese trademark Law. The obstacle was that ‘a combination of colours’ is eligible for registration in accordance with Article 8 of the Chinese Trademark Law. By contrast, regarding its trade mark application (No. G1031242), the elements of its mark consist of a single colour of ‘red’ and a shape of shoes’ bottom. Obviously, CNIPO has held conservative standpoint and refused to register a single-color mark due to being lack of distinctiveness as an image mark. In the following jurisdictional procedures, the Beijing Intellectual Property Court overturned it and argued that it should be assessed with the standards of three-dimensional trademarks rather than image mark, which led to disparity over the application of relevant laws.
However, the Supreme People’s Court introduced another explanation of Article 8 of Chinese trademark Law. The judge explicitly decided that a single color on the bottoms of its shoes is not excluded from being registered as a trademark being a combination of color and shape of its products, as long as it could be established a particular connection between the sign of red sole and a single source of its products among the consuming public.
The victory achieved by Louboutin has encouraged western brands owners to seek trade mark registration protection in China over non-traditional trademarks with distinctive characters, which is recognized as the main function of a trade mark, being known as to identify a consistent source to the consumer.
