“The shiny red colour of the soles has no function other than to identify to the public that they are mine. I selected the colour because it is engaging, flirtatious, memorable and the colour of passion”. Christian Louboutin

Any woman with an incurable obsession with shoes will make it her mission in life to have at least one pair of Christian Louboutins, a.k.a ‘Loubous’, in her shoe closet.  Is it because they are comfortable? Definitely not. In Mr Louboutin’s words “I hate the whole concept of comfort … I’ll do shoes for the lady who lunches…” meaning that there is no way a woman can flaunt her loubous while shaking it on the dance floor unless she is prepared to suffer … alot.  Is it because of the design? Again, no.  Mr Louboutin’s popular court shoes are simply just that … court shoes. Is it because they are affordable? Not quite. The cheapest pair of Loubous will set you back around Eur400. The reason why a pair of loubous is an absolute ‘must-have’ for shoe lovers is because of his trademark – the red sole.

through his mark Mr Louboutin has rendered a simple design into a product which is instantly recognisable … it is this mark which Mr Louboutin will protect, through trademark and copyright laws, to ensure that it will be recognised as his brand and nobody else’s

The red sole has become distinctive of the Louboutin brand, such that his shoes are often referred to simply as “red bottoms” in popular culture. Whether considered by some as a manifestation of glamour and privilege, or a marketing gimmick by others, through his mark Mr Louboutin has rendered a simple design into a product which is instantly recognisable, not only by women but also by men. It is this mark which Mr Louboutin will protect, through trademark and copyright laws, to ensure that it will be recognised as his brand and nobody else’s.

Christian Louboutin v. Yves Saint Laurent – Seeing red

On January 1, 2008, the United States Patent and Trademark Office issued a trademark registration for Louboutin’s lacquered red soles (the ‘Red Sole Mark’).  In 2011, Louboutin sued YSL in connection with four shoe designs from YSL’s 2011 ‘Cruise’ collection, all-red shoes bearing red soles, claiming trademark infringement on the basis that the use of the colour red was too similar to his ‘Red Sole Mark’ and was capable of confusing customers.

The U.S.Court held that “the lacquered red outsole, as applied to a shoe with an ‘upper’ of a different colour, has ‘come to identify and distinguish’ the Louboutin brand, and is therefore a distinctive symbol that qualifies for trademark protection.” The protection of Louboutin’s trademark was therefore limited to situations when the red sole is matched with a contrasting upper.  The Court concluded that the red sole mark’s ability to stand out from competitors depended on the colour contrast between the red sole and a non-red upper of the shoe. Even though Louboutin’s trademark claims were dismissed on the grounds that YSL’s shoe was completely red and as such his mark was not being used, this case confirmed that colour can indeed serve as a trademark in the fashion industry, and that Louboutin’s world famous Red Sole trademark is valid, protectable and enforceable.

the lacquered red outsole, as applied to a shoe with an ‘upper’ of a different colour, has ‘come to identify and distinguish’ the Louboutin brand, and is therefore a distinctive symbol that qualifies for trademark protection

Gucci v. Guess – Everything starts with a ‘G’

Gucci is another brand immediately recognisable because of its ‘GG’ trademark, registered in 1984 in the UK in four different classes covering handbags, T-shirts, watches and cosmetics. Gucci is now one of world’s most valuable brands raking in $4.7 billion in total sales in 2013.

The legal battle between Gucci and Guess in respect of Gucci’s claims of trademark violation by Guess is never-ending and well known to the fashion enthusiasts of both the luxury Italian label and the American clothing company. In 2009 The House of Gucci sued Guess Inc. claiming that it “Gucci-ized” many of its products by copying Gucci’s trademarked designs on wallets, belts, shoes and other items. In 2012 a U.S. District Court ruled in favour of Gucci and awarded the fashion powerhouse $4.66 million in respect of four trademark infringement claims:  (i) Gucci’s green-red-green stripe mark; (ii) a script logo (the repeating GG pattern); (iii) a stylized “Square G”; and (iv) a group of four interlocking “G”s known as a “Quattro G.”

Even though Gucci walked away victorious, the pay-out was small considering that Gucci’s initial claim was for the sum of $124 million. Two issues appear to have weakened Gucci’s law suit. In the first place the judge noted that Guess was founded in 1981 and started producing the designs in question around 1995. It was impossible for Gucci to have been ignorant of Guess’ designs until 2009, that is, the date of filing of the law suit, especially since the Gucci and Guess stores were, very often, located close to each other in the same mall. Secondly, the judge concluded that “courts have uniformly restricted trademark counterfeiting claims to those situations where entire products have been copied stitch-for-stitch.” Therefore the court concluded that Guess had diluted Gucci’s logos, rather than counterfeited them.

LV v. Haute Diggity Dog – Hot Dogs and Handbags

Louis Vuitton is the world’s most valuable luxury brand with a brand value of $29.9 billion as of November 2014. Its products range from handbags and shoes, to watches, jewellery and chic accessories. What is it that makes the brand easily recognisable? The famous “LV” monogram of course. Aside from the trade name “Louis Vuitton”, other notable registered trademarks include the interlocking LV initials in a circle design, the LV initials and Monogram Canvas Design, LOUIS VUITTON MALLETIER A PARIS in Rectangle Design and the LV initials Brass Lock Design.

In 2007 Louis Vuitton filed a lawsuit for trademark dilution and copyright infringement against the pet product company “Haute Diggity Dog” in connection with its product line called “Chewy Vuitton” – A chew toy for dogs. The famous “LV” was represented instead by a “CV”. On its part, Haute Diggity Dog argued that the product line was only a parody, similar to other of its parody products for luxury brands such as Chewnel No. 5 (Chanel No. 5) and Jimmy Chew (Jimmy Choo).

The United States Court of Appeals upheld Haute Diggity Dog’s arguments and stated that the pet product company did not infringe on the copyrights or trademarks of Louis Vuitton.  The Court rejected the argument that the Chewy Vuitton products would cause confusion for customers of Louis Vuitton and concluded that the parody line was as an amusement that was meant to entertain its customers.

Copycat alert

“In order to be irreplaceable one must always be different” – Coco Chanel

The colour red, the letter G and the famous LV. These represent big brands which are the result of their proprietor’s intellectual creativity in the fashion industry and ambition to be different and distinctive.  This intellectual creativity is an asset which must be protected to avoid the copycat from acquiring an unfair advantage by trying to ‘cash in’ on somebody else’s vision, innovation and creative expression. If you value your brand, regardless of the size of your enterprise or the type of industry you are in, be it fashion, financial services, igaming or otherwise, inform yourself on your Intellectual Property rights. The IP legal framework is there to protect you. So use it!

This Article was first published on Money Magazine, June 2015.