Since 1992 the shoes designed by Christian Louboutin are characterized by red soles, color stipulated in the international identification code as Pantone 18 1663TP.
It started when the French designer received the prototype of a shoe he was designing (inspired by "Flowers" by Andy Warhol) but he was not convinced because although it was a very colorful model was very dark behind the sole.
So he had the idea of doing a test by painting the sole of the design with his assistant's own red nail polish. He liked the result so much that he established it in all his collections and turned it into a personal seal recognized worldwide.
But the exclusivity of distinctiveness of the red sole of CL's empire was truncated when several fashion brands added the red sole to their shoe designs.
Christian Louboutin does not doubt that the colour of a brand is an distinctive mark and therefore deserves protection. For this reason, he had gone to court to obtain a colour patent to protect the exclusivity and prestige of his collections, avoiding possible confusion among consumers as to the origin and quality of the product.
Article 15 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) defines a trademark legally as any sign or combination of signs that are capable of distinguishing the goods or services of one enterprise from those of other enterprises.
The controversy arises from the interpretation of the ambiguous concept of "signs", since not all the signatories of the referred international Agreement interpret it in the same way.
TRIPS clarifies that the concept of "signs" protects, "in particular words, including personal names, letters, numbers, figurative elements and color combinations, as well as any combination of these signs".
Therefore, colors could be subject to trademark protection, but the Treaty seems to try to avoid the possibility of individual colors being monopolized by individual companies. Or at least, it does not decide to protect this situation expressly, leaving the issue to the interpretation of the signatory States, in their national implementing regulations.
It should be borne in mind that the regulation of different States and the interpretation of their courts is very different in terms of concepts and also that everything that is not registered in the corresponding offices is subject to plagiarism in the case of not having a registered distinctive sign is very complicated to protect your creations before the judge, so the protection of red soles of Loubutin have to descend to the national level of each State.
In the USA, Loubitin obtained the protection of the soles of his shoes as a protected identifying sign of his brand after winning the dispute against Yves Saint Laurent.
In Europe the courts have also ruled in favour of the legendary soles after the Dutch shoe company Van Haren started marketing products with the red sole.
The recent ruling comes after the European Court of Justice also ruled in favour of the French company arguing that the red tone on the bottom of the shoe constitutes a recognised characteristic of the mark on the understanding that the red colour Pantone 18 1663TP is perfectly registrable as a mark, as long as it is distinctive, and that the fixation on the sole cannot be understood as the shape of the mark itself, but simply as the location of the visual mark.
In China, the battle took place when the Chinese Trademark Office rejected the trademark extension application that had been filed at WIPO for registration of the trademark "color red" (Pantone No. 18.1663TP) for goods, "women's shoes" - class 25, because "the mark was not distinctive in relation to the goods mentioned".
After appealing and finally losing the Beijing Supreme Court ruling in favour of CL on the grounds that the nature of that mark and its constituent elements were erroneously identified.
The Beijing Supreme Court held that the Trademark Registration Law of the People's Republic of China does not prohibit registration as a position mark of a single color on a particular product/article.
In accordance with Article 8 of that Law, it reads as follows: any distinctive sign owned by a natural person, a legal person or any other organization of persons, including, inter alia, words, drawings, letters, numbers, the three-dimensional symbol, the combination of colors and sound, as well as the combination of these elements, may be registered as a registered trademark.
Consequently, and although the concept of registered trademark presented by Louboutin was not expressly specified in Article 8 of the Law as a registered trademark, it also did not seem to be excluded from the situations listed in the legal provision.
The Supreme Court ruling of January 2019, ended almost nine years of litigation, protected the registration of specific color marks, color combinations or patterns placed on certain products / articles (position mark).
The positional mark is generally considered to be a sign composed of a three-dimensional or 2D color symbol or a combination of all these elements, and this sign is placed in a particular position on the goods in question.
Allowing Chinese courts to interpret the provisions of Article 8 of China's Trademark Registration Law, considering that other elements could be used as a registered trademark.