A New Strategy

Mr. Ragot explained that the backlash from customers prompted a new brand protection strategy that garnered cross-company support. The first step, he explained, was undertaking an in-depth evaluation of the firm’s IP rights, which revealed that the company required more legal protection.

He said the company realized that its main registration for the trademark was an old image of a “flattened” red sole, and that this trademark registration was very weak and would not generate many positive outcomes during enforcement proceedings. Therefore, the luxury brand decided to move from one trademark presentation to a new one.

The brand focused initially on protecting its updated trademark in the European Union where it faced several oppositions at the EU Intellectual Property Office and the Court of Justice of the European Union.

"We had a very tough time,” he said.” It took us nine years to get the red sole trademark protected and tested in court, but I can say that it is now bulletproof. We have a strong set of judicial decisions that we can put forward to pursue infringement claims.”

The Christian Louboutin brand also faced, and overcame, severe hurdles in the United States.

In 2011, the brand sued designer Yves Saint Laurent (France) for the infringement of the red-soled shoes, but U.S. District Judge Victor Marrero at the United States District Court for the Southern District of New York questioned the validity of the trademark.

The brand’s fortunes changed a year later when the U.S. Court of Appeals for the Second Circuit held that Christian Louboutin could retain the exclusive right to use the color red on the bottom of its shoes whenever the upper part of the shoe was in a contrasting color, according to Mr. Ragot.

“That decision was a big game-changer for us,” he said. It helped the brand to enforce its rights not only in the United States but also in Europe and elsewhere.

“We managed to put in place a comprehensive enforcement program and to remove many of the counterfeit red-soled products that were available in the marketplace,” he continued.

Customer Awareness

Asked by Ms. Schmitt about the role consumer awareness played in this process, Mr. Ragot described how Christian Louboutin’s pioneering Stopfake program, with a zero-tolerance stand as its foundation, has become a powerful weapon in the brand’s war against counterfeiters. On Stopfake’s online platform, consumers can verify domains and stores as legitimate vendors of Christian Louboutin shoes.

“We had to find a means whereby we could talk about what we were doing, raise awareness among our customer base, and garner any information they may provide to better enforce our rights. The Stopfake website seemed to be the best option available to us to reach a broad audience,” he said.

But, Mr. Ragot conceded, this transparent approach is a novel one in the luxury brand sector, which prizes and cultivates an aura of mystique around its products.

“Our competitors said we were crazy and that it was a mistake,” Mr. Ragot contended, “but we were adamant that this was the right approach. And since the launch, the reaction has been really positive.”

This success, despite the naysayers, encapsulates the significant role of in-house counsel in pursuing and developing ambitious new strategies, he said.

“As an in-house legal counsel, you need to be willing to be daring, to position yourself as an advisor and business partner,” he emphasized. “It’s important to take the role seriously.”

Summarizing his key takeaways for brand success, Mr. Ragot agreed that it requires “a willingness to dare, to communicate, not just to react, and to take initiatives.”

In addition, he reiterated the importance of internal collaboration within a company.

Mr. Ragot concluded: “Legal should be represented in every business committee. It is important for companies to be well advised legally, to take the right decisions, and for legal to be able to offer a different view on some topics.

“At this level of management, you should also hear from the chief finance officer, the creative director, and the communication and business people—everyone should participate and offer their expertise.”

Video courtesy of Envato Elements / AlexeyD