CHRISTIAN LOUBOUTIN, a French designer brand famous for "red soled shoes", won a lawsuit in a tort dispute in China recently.
The Beijing Intellectual Property Court made a first instance judgment on the case of unfair competition dispute involving "red soled shoes", and determined that the trade name of "red soled shoes" of Christie Lubuto Simple Co., Ltd. (hereinafter referred to as "Christie Company") and the red decorative design used on the outer soles of women's high-heeled shoes constituted "a certain influential trade name" and "a certain influential packaging".
The court finally awarded a compensation of 5 million yuan after hearing
First, the plaintiff Christie Company and Lambertine (agent) Company requested to protect the product name with certain influence as "red soled shoes" according to Article 6 of the Anti Unfair Competition Law, and the decoration with certain influence was the red decoration used on the outer soles of women's high heels.
The key to judge whether the parties involved in this case have a direct interest in this case is to determine whether the interests contained in the name of the "red soled shoes" and the decoration of the red soled shoes are protected by substantive law for the parties involved.
The evidence on record submitted by the plaintiff in this case can prove that the decoration and trade name involved in the case have established a stable correspondence with Christie Company among consumers, and it can be determined that the rights and interests of the decoration and trade name involved in the case belong to Christie Company.
Secondly, Christie submitted relevant evidence to show that it has actually sold footwear products in mainland China since 2011, with the sales volume exceeding 900 million yuan; Since 2003, it has publicized and reported the "red soled shoes" in mainland China. The publicity media include many well-known media nationwide, covering many parts of the country.
Based on the above evidence, it is sufficient to prove that the "red soled shoes" and the red soled decoration have a high market reputation, have established a stable relationship with the relevant public, and have a significant feature of distinguishing the source of goods. Therefore, the trade name of Christie's "red soled shoes" and the decoration with the sole color designed as red belong to the "influential" trade name and decoration logo referred to in Article 6 (1) of the Anti Unfair Competition Law.
Guangdong Wanlima Industrial Co., Ltd. (hereinafter referred to as "Wanlima Company") uses without authorization the same or similar logo with the trade name of "red soled shoes" and the red soled decoration that have certain influence on Christie Company, which is enough to cause it to be mistaken as having some specific connection with Christie Company, and its behavior violates the provisions of Article 6 (1) of the Anti Unfair Competition Law, constituting unfair competition.
The court ruled that Wanlima Company stopped the infringement and compensated the economic loss of 5 million yuan and reasonable expenditure of 445000 yuan.
Christie Company has repeatedly defended its rights for red soled shoes
This ruling is another major victory on the way of Christian Louboutin's red soled shoes' rights protection.
In 2007, Christian Louboutin, a French footwear designer, successfully applied for a trademark in the UK, specifically referring to "the specific red color used at the sole (Pantone color number: 18.1663TP)".
However, Christian Louboutin's process of registering the trademark of "red soled shoes" in China has experienced ups and downs. In 2010, Christian Louboutin submitted the trademark territorial extension protection in China, but the China Trademark Office said that the mark was "lacking in significant features" and rejected the application for international registration of the trademark.
According to Article 8 of the Trademark Law newly revised in 2013, any sign that can distinguish the goods of a natural person, legal person or other organization from the goods of others, including words, graphics, letters, numbers, three-dimensional signs, color combinations and sounds, as well as the combination of the above elements, can be applied for registration as a trademark.
The Beijing Higher People's Court said that although the elements of the logo of Christian Louboutin's trademark application did not belong to the above list, they were not excluded.
Finally, the Supreme People's Court of China and the Beijing Higher People's Court believed that "a single color with limited use location" could be used as a trademark. This is an important victory for Christian Louboutin who wants to register "specific red at the sole position" as a trademark.
Since 2011, Christian Louboutin has been carrying out a wide range of "red soled shoes" rights protection activities around the world, and the objects of complaint include international well-known luxury brands:
For example: Christian Louboutin filed a lawsuit in the federal court in Manhattan, New York, accusing YSL, a French luxury brand owned by Kering (Kaiyun), a French luxury group, of plagiarizing red soled shoes, demanding to stop infringement and claim millions of dollars. The Federal Court of Appeal in New York reviewed the case and reaffirmed the legitimacy of Louboutin's trademark of red sole.
The Paris High Court made a judgment in the trademark dispute between Christian Louboutin and Kesslord, a French fashion brand, recognizing that Christian Louboutin owns the patent right of red soled shoes.
The judge of the District Court of the Hague in the Netherlands ruled that the trademark of Christian Louboutin's red soled shoes was valid, and the case that Van Haren, a fashion retailer in the Netherlands, infringed the trademark patent of Christian Louboutin's red soled shoes was established.
How do foreign enterprises register trademarks in China?
Foreign enterprises must meet the requirements prescribed by law in order to obtain approval for trademark registration.
Substantive elements
Meeting the substantive requirements of a registered trademark, namely Articles 4, 8, 9, 10, 11, 12 and other relevant provisions of the Trademark Law, is a necessary condition for obtaining protection when a trademark is approved for registration and infringement. To sum up, it is necessary to meet the distinctiveness, non prohibition and non functionality of registered trademarks.
Foreign enterprises should pay special attention to that even foreign registered trademarks do not meet the substantive requirements of China for registered trademarks and cannot be registered in China.
Formal requirement
The formal element is a procedural matter of trademark approval and registration. China's formal review mainly includes:
(1) Whether the applicant's qualifications meet the legal requirements;
(2) Whether the name, seal and relevant information of the applicant are consistent with the business license;
(3) Whether the application form is filled in regularly;
(4) Whether the goods or services applied for registration are filled in concretely and normatively, whether the classification is accurate, and whether they are consistent with their business scope;
(5) Whether the quality, specification and quantity of the trademark and its drawings meet the requirements;
(6) Whether the entrusted trademark agency and the power of attorney are standardized;
(7) Certificates to be attached, indicating whether they are complete;
(8) Whether the registration application fee is paid.
Other precautions for trademark registration
When foreign trademark brands are registered in China, we must grasp the principle of early registration. At present, China has the largest number of trademark applications in the world, ranking first in the world for 17 consecutive years. The number of trademark applications by foreign applicants continued to grow.
Apply for registered trademarks as early as possible, including those specifically applying for territorial extension to China. The earlier you register, the more you can avoid preemptive registration by others and the formation of prior rights barriers.
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