Legal Fashion Advice from a Non-Fashionista

If your brand or product can or has become recognizable by one of its distinguishing features, serious contemplation should be given to protecting this feature through trade mark registration and enforcement. It may turn out to be one of the cheapest and most effective forms of marketing your business has ever invested in.
Placing marks on products to identify and protect ownership is nothing of modern origin.

The paintings of bison and horses in the Lascaux caves in southwestern France have markings indicating ownership; those paintings are approximately 17,300 years old. The blacksmiths who made swords for the Roman Empire placed stamps and seals on their products to speak to the quality of the weapons. The famous Munich-based brewery Löwenbräu has claimed use of its lion mark since 1383.
The value in a trade mark can be remarkable. Forbes magazine commissioned specialist consultancy firm Brand Finance in 2011 to calculate the most valuable brands in the world. The top three were as follows – Google (US$44.3b), Microsoft (US$42.8b) and Walmart (US$36.2b).

Please be reminded that these astronomical figures relate to the value of these companies’ brands alone. The organization analyzed the potential future returns that could be accrued from each asset, based on an assessment of how much it would cost to license from a third party.

When reading this information about the possible wealth creation from the ownership of valuable trade marks, I couldn’t help but recall a piece from comedian Chris Rock’s standup performance entitled “Never Scared” in 2004. In this performance, the comedian attempted to articulate the difference between being rich and being wealthy. He quips that the dominant basketball center Shaquille O’Neal is rich, but the man that signs his cheque is wealthy. When citing his own desire for wealth, he mused that he wanted to have money like the family that owns the colour blue. Although the comedian was merely trying to garner a reaction by getting a point across, the ownership of a colour trade mark has come into focus recently in law suits involving French footwear designer, Christian Louboutin.

Mr. Louboutin’s signature style has become the incorporation of a shiny, red-lacquered sole on his footwear. Legend has it that the designer fathered the idea of assigning all of his designs a distinctive red, gloss sole in 1992 after painting bright red nail polish onto the bottom of a pair of shoes, because he felt the shoes “lacked energy”. The famed red soles went from strength to strength and truly hit the main stream when fictional character, Carrie Bradshaw, from HBO’s critically acclaimed series Sex & the City, began making Louboutin’s an object critical to her survival rather than her desire.

However, Louboutin’s attorneys did not secure a trade mark registration for the red-lacquer sole until 2008, with a specific colour trade mark known as Pantone -18 Chinese Red. The trade mark was registered in the U.S.A. and 75 other countries that observe WIPO’s conventions. By this point, a litany of other designers, known and unknown, began imitating the red sole concept. Louboutin shoes can range from US$495 to US$6000 and shoe sales represent 95% of the designer’s US$300m annual revenue. By 2011 Louboutin began seeing red as he noticed international brands aggressively marketing something he considered to be his product, which undoubtedly ate into his revenue stream.

The French designer decided to put his shoe down after examining the competing French design house Yvet Sant Laurent (“YSL”) spring 2011 collection. The YSL “Resort 2011” collection donned red suede shoes with matching soles, alongside purple shoes with purple soles and various other colour shoes with matching soles. However, it was the red suede shoes with the red soles which represented the last straw for Louboutin.

This article is for general information purposes only and does not constitute legal advice.

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