Christian Louboutin Wins Trademark Protection for its Red Bottoms in China
Christian Louboutin is a French luxury fashion brand widely known for its “red soled” shoes, famously referred to as “red bottoms” by celebrities, fashion icons, and influencers. From as early as 2012, the company has been subject to various trademark-related litigation relating to its signature red soles. On September 9, 2022, the Beijing IP Court ruled in favor of Christian Louboutin, who had sued Guangdong Wanlima Industrial Co., Ltd., a leather manufacturing company, in an unfair competition case involving the red sole mark.
In 2012, the United States Court of Appeal in Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., held that the red sole mark was entitled to trademark protection in the United States. In 2018, the European Union’s highest court, EU High Court held that Christian Louboutin’s red sole shoes were eligible for trademark protection. In 2020, the Supreme People’s Court in China, upheld an earlier decision by Beijing Higher People’s Court, ruling that Christian Louboutin’s red sole mark was registrable under Chinese Trademark Law.
On September 9, the Beijing IP Court ruled in favor of Christian Louboutin in an unfair competition case against Guangdong Wanlima involving the red sole mark. Guangdong Wanlima sold and advertised women's shoes with red soles online and in department stores. Christian Louboutin argued that its red sole shoes have been promoted and sold in the Chinese market from as early as 2003 obtaining significant recognition in China, and, therefore, Guangdong Wanlima actions in advertising and selling similar red sole shoes violated the anti-unfair competition law.
The Beijing Intellectual Property Court ruled in favor of Christina Louboutin stating that “Christian Louboutin’s “red-soled shoes” trade name and the decoration with red-sole color are the trade names and decoration marks with ‘certain influence’”. For this reason, the Court held that Guangdong Wanlima selling similar shoes was malicious infringement and issued a permanent injunction to cease its sale of red sole shoes. Louboutin was awarded 5 million RMB and attorney fees.
Prior to the China Supreme Court ruling in 2020, Christina Louboutin’s red sole marks had been denied registration in China for lack of distinctiveness. The China Supreme Court’s decision that the mark had met the standards for registration in China opened possibilities for registration of non-conventional trademarks for international companies looking to trademark their products in China. The recent 2022 decision in Christian Louboutin v Guangdong Wanlima Industrial Co., Ltd demonstrates the possibility of protection for well-known and non-convention marks in China.
What does this mean for USPTO Trademark OWNERS?
The 2022 decision translates as a growth and investment opportunity for American brands looking to find ground in China. The decision makes it possible for trademark registrants, with the United States Patent and Trademark Office (USPTO), to register their trademarks in China and to enter into the Chinese market with protection from unfair competition with other international and China-based brands.
Registration of Trademarks in China
Currently, there are two ways to register trademarks in China. Filing a national trademark application directly with the Chinese Trade Marks Office (CTMO) or making an international application using the Madrid Protocol (MP) system. Seeking protection in China under a MP application can take longer than a National application, because the CTMO has between 12 to18 months to examine any applications filed via the MP route. If protection is required quickly in China, the MP route may not be the best option for an international applicant.
Filing an international application is a tedious process that is best handled by an experienced attorney. The Antares Law Firm assists clients in filing international trademark applications. Contact our intake team today.
— LAILA GHAURI, ESQ., TRADEMARK AND INTERNET LAWYER, ANTARES LAW FIRM
