Greetings Inmates!

The following IP story details how one man’s simple but brilliant idea has thrown him into various legal battles almost every year. It’s rather lengthy but good.

Credit to our favorite lawyer @senamisomoyo

The Star of our story today is a man known as Christian Louboutin. For those who don’t know him, he’s a very famous French fashion designer from Paris.

Louboutin had a troubled childhood. Excessive partying & a dislike for education eventually led him to dropping out of high school in his teen years. Thereafter he decided to pursue a career in the Fashion industry. Only in Europe! Imagine pulling this stunt in an African home

He struggled in the industry initially. However, with time he started designing shoes and clothes for Chanel, Yves Laurent & a whole bunch of celebrities in Hollywood.

In the early 90s Louboutin flirted with the idea of bringing back stilettos into fashion.

Back then, very high heels weren’t really a vibe & some women as extra as opposed to classy. Louboutin thought that the higher the heels, the longer the legs of the person who wears them and the more beautiful she looks. (PS: I’ve never really thought about it like that)

Louboutin grabbed his pencil and started working on sketches for these high heels. However, once he started making the actual shoes they looked bland and they didn’t excite him as much as the sketches.

In an act of spontaneity or inspiration (creatives often this stuff comes to them in dreams), Louboutin grabbed his assistant’s red nail polish & painted the bottom of the shoes red. SUCCESS! The red instantly gave the shoes life!!!

In that act of simplicity Louboutin had struck gold & created a shoe that was to become his flagship brand for years to come. The “red bottom” heel was born and almost every woman wanted a pair. He immediately sought to make the shoes a luxurious brand.

They were immediately marketed as a high end shoe & with time they were worn mostly by celebrities. At present, one of the most expensive pairs goes for almost R25,000 mntase!

The red sole became synonymous with CL heels. It became the distinctive feature of the shoes. Everyone wanted a pair & whoever wore a pair made sure the red sole was visible for all to see. Louboutin then proceeded to register a trademark for the red sole in various countries.

There was one big problem. Trademark laws are pretty similar worldwide. One of the fundamental rules of TM Law is that no one person can register a color, shape or descriptive word amongst other things as a trademark.

The idea behind this is simple: IP laws prevent other people from copying you and/or using the item you have registered. You basically have a monopoly to use something at the exclusion of everyone else.

Notwithstanding this, Louboutin was able to obtain registrations for his red bottom trade mark in some countries. He was able to prove that the use of the color red as a sole for shoes had become synonymous with his brand. Some trade mark offices accepted this.

In the early 2000s Louboutin was angered to learn that other fashion brands had started incorporating red soles onto their shoes.

One such company was Yves Saint Laurent, a huge French fashion house. Established in 1961 it is one of the leading luxury fashion brands.

YSL started making red shoes with red bottoms & selling them in the USA, which was one of Louboutin’s popular markets. Obviously Louboutin had issues with this & so he decided to sue them!

What made this particularly worse was that Louboutin had worked with YSL in the past.

YSL argued that no one person should have monopoly on a color. They said that in fashion & especially with shoes, color is a huge deal. Granting one person a monopoly will stifle creativity in the industry. They wanted Louboutin’s trade mark to be revoked for being invalid.

The matter was heard in a US District Court & the judge in the matter said 2 main things;

1. It would be unfair to restrict other people from using the color red & allowing Louboutin to continue designing shoes as he pleases.
2. Color is not a feature that’s capable to-

-distinguishing. Even if Louboutin’s gained a reputation for the red bottoms. It plays a unique role in creativity. Louboutin should not be able to monopolize it.

The Judge said that YSL can continue to sell their red bottoms on the condition that the rest of the shoe must also-

-be red. Louboutin was allowed to maintain his trademark in the US as long as the rest of the shoe was not red. A compromise of sorts.

Basically like this, Louboutin would not be allowed to make an all red shoe in the US. YSL would not be allowed to make shoes with red bottoms-

-in another color besides red on the body. The YSL case was only the beginning of CL’s fight to prevent other people from selling red bottom shoes in several countries. The following year CL found himself in court again. This time against leading Spanish fashion brand ZARA.

The following year in France, Louboutin claimed that Zara had infringed on their red bottom trade. This backfired badly as the French Supreme Court held that the red sole trade mark is invalid. No one can ever have a monopoly over a color.

This was a huge blow Louboutin. France, his country of origin, is seen as a huge market for “high end” clothing & this decision meant anyone could now sell red bottoms in France.

Still recovering from the Zara case, Louboutin found himself back in court again.

his time again a fashion company known as Van Harem. They too started selling red bottoms.

CL did however have success against Dutch company Van Harem. In this case, the court agreed with CL that the red bottoms have become a distinctive feature.

Van Harem was ordered to stop selling their red sole shoes. Why does he have to fight in every country you might ask? In short, although TM Law is similar in each country, the courts interpret trade mark issues in their own ways.

My View: One can’t use the law to monopolize something that should be available for others to use in their work. So even if such use or the way you’re using it is “different” or “new.” But that’s just me, some of you may disagree & I’d love to hear your view on color trade marks.

What started off as a simple & brilliant idea has become one of the most legally contested brands in the world today. Louboutin is involved in a court case almost every year. The real danger is that if he lets other brands sell red bottoms, then his shoes will lose their-

-distinctive nature & everyone will have an alternative often a much cheaper one. The exclusivity is what keeps his shoes relevant & the price luxurious.

To all the gents, if you want to buy some Louboutins for your person I’d recommend Smal Street Mall. I’m sure you could find a pair for just R200. Just be careful not to get robbed.

Another alternative is to buy ordinary heels & paint the bottoms yourself at home.

THE END: Big Lesson- Make sure that whatever feature you want to trade mark is not a non-distinctive feature. Stay safe good people.