Is M2Malletier Picking a Fight it Can't Possibly Win?

M2Malletier is reportedly preparing to sue Carolina Herrera if the two brands cannot settle a looming legal issue over an allegedly lookalike handle that appears on both brands’ handbags. According to M2Malletier’s co-founder Marcela Vélez, who told Fashionista on Thursday that the brand’s legal team issued “a formal demand letter to [the owners of Carolina Herrera’s sister label, CH Carolina Herrera owners] STL and Puig Group, outlining a request for an out-of-court settlement” in April, in connection with the brand’s trademark-protected “needle handle.”

Since then, the parties have attempted to settle the matter – which M2Malletier’s claims is primarily copyright infringement, per Fashionista – out of court to no avail. As a result, "M2MALLETIER is now exploring the possibility of a lawsuit against STL and Puig Group, for copyright infringement, unfair competition, and risk of confusion and/or association.” The latter of which sounds a bit like trademark infringement.

CH Carolina Herrera's bag 

CH Carolina Herrera's bag 

Putting aside the merits of a copyright infringement claim here, as this appears to clearly be a trademark matter (as indicated by M2Malletier’s claim that it maintains “trademark” protection for its handle and its citing of issues, such as “consumer confusion,” a classic trademark infringement concern), M2Malletier does not appear to have any U.S. registrations – either copyright or trade dress (the appropriate form of trademark protection in the case at hand) – for the needle handle.

With this in mind, it is no wonder that STL and Puig Group are fighting back. While registartions with the U.S. Copyright Office and/or the U.S. Patent and Trademark Office are not required in order for a brand to enjoy protection, it makes suing in connection with such a design quite a bit more difficult. In fact, you cannot sue for infringement without a copyright registration.

As for trade dress, a win seems like it would be almost impossible for M2Malletier in the U.S., at least, because it would likely not be able to show that the average consumer associates its handle with its brand – aka: that its design has “secondary meaning.” While M2Malletier has had some major red carpet and street style moments - Solange, Cate Blanchett, Jessica Alba, Eva Mendes, and Kate Hudson, among others, are fans - its bag is still a relatively unknown one. 

More to come ... maybe.