While Louboutin awaits a decision in the high-profile dispute with Yves Saint Laurent over its red sole trademark, another potential brand challenge has reared its head – coming not from a rival fashion house, but from members of the public wielding tester pots of red paint. But can opportunity be found in this sort of imitation activity?

Noting the current cost-conscious mindset of many consumers, UK home enhancement retailer Homebase has issued a release attributing a 40% year-on-year rise in sales of two tester paint pots (specifically ‘Flame’ and ‘Show Stopper’) to customers using the product to “recreate their own Louboutins at a snip of the price of the iconic red-soled designer shoes”. Rather than splash out on the must-have shoes, it notes that some customers are merely painting the soles of their existing shoes red, with store manager Peter Rooney commenting: "While many people tend to look at magazines to get the right paint colour for walls, we have recently noticed a significant number of girls in the store colour matching the tester pots to pictures of designer shoes in fashion magazines and requesting tips on how to paint on leather or rubber." The release even goes on to provide advice on how best to achieve the right look. 

National newspaper The Telegraph reported on the story, interviewing one ‘recreater’ of the Louboutin look, who stated: "There was no way I could afford to buy a pair of Louboutin heels, but I had my heart set on them and felt the pressure to be fashionable at the occasion. I bought a £20 pair of plain black shoes and a tester pot and recreated the designer look at home. I received so many compliments at the wedding about my gorgeous shoes but I didn't have the heart to confess they were DIY fakes.”

Karen Artz Ash, partner and national co-chairperson of the IP department at Katten Muchin Rosenman LLP, admits the Louboutin example poses an interesting legal issue for fashion brands faced with similar activities: “Clearly, if the person painting the soles of the shoes were to sell or barter the shoes to a third party, that would constitute a classic case of infringement and unfair competition. On the other hand, I question whether there is a cognisable legal action that could be taken against an individual who is doing something for their own enjoyment. While I could think of allegations that could be made, the idea of going after women who are painting the soles of their own shoes would not seem to be a very popular thing to do.”

That said, she told WTR that the conduct could have an impact on the value of the original, legitimate product being imitated. For instance: “Eventually, the paint would peel off and the shoes would begin to look shabby. Other people who may be confused into believing these are really the designer shoe will think that the quality is poor or that they do not wear well. This reflects adversely on the brand holder and could be detrimental to the value of the designer shoe.”

Whatever strategy Louboutin adopts with respect to the current example, it does throw up a number of interesting trademark issues. However, the activity also potentially offers a market opportunity for high-end brands that want to appeal to those who are inspired to wear luxury goods but, like The Telegraph’s interviewee, cannot currently afford to. Ash concludes: “Perhaps the lesson for the brand holder is to consider selling a lower-priced version (with a different secondary brand name) of its famous red soled shoe. This could bring the prestige to a broader audience and allow the brand holder to control the quality of its products and the way they are perceived publicly. If done correctly, it should not undermine the value of the higher end, more exclusive product. Women would no longer have an incentive to make their own versions and would be happy to be able to buy the ‘real thing’".