On Wednesday, John Galliano showed his latest wares for Maison Margiela. The Fall/Winter 2017 collection consisted of MM staples, such as nude bodysuits, deconstructed-then-reconstructed jackets (some being trench coats, others taking the form of cut-up varsity jackets) and dresses, and Tabi boots, of course. The look that opened the show – a traditional trench coat bearing cut-outs, which were stitched up with fabric bearing Burberry’s famed checkered print – was particularly striking. The question: Is that legal?
The answer: It depends.
As the holder of an array of international federal trademark registrations that cover its checkered print, including registrations that specifically apply to usage on “Coats, Top Coats, Jackets” – Burberry has extensive legal rights in its famous print. As such, Burberry not only has the exclusive right to use the print and confusingly similar iterations of it in connection with garments (among other things), it has the duty – as the trademark holder – to police unauthorized uses of that mark.
With that in mind, Margiela’s jacket is problematic on its face, as it makes use of Burberry’s checkered trademark or one that looks a lot like it. (The similarity of the print did not go unnoticed. Famed fashion critic Cathy Horyn, for example, tweeted a photo of the jacket along with the caption, “Margiela shades Burberry.”). Even if the fabric at play is authentic Burberry fabric (if it is not, then counterfeiting claims come into play), Burberry may still have claims against Margiela, namely for trademark infringement and dilution.
This is where the situation gets a bit dicey. In order to successfully claim trademark infringement, a plaintiff trademark holder (Burberry, in this instance) must show that the defendant (Margiela) is using the trademark in a way that is “likely to cause consumer confusion as to the source or origin of goods.” So, we are faced with two distinct scenarios – and their corresponding outcomes – here.
1. If we assume that Margiela is planning to do what so many brands do and only show the jacket at issue on the runway and not actually offer it for sale, then chances are, Burberry’s claim for trademark infringement might actually be quite weak.
Shown only on the runway during a Maison Margiela show, the jacket is far less likely to cause confusion as to its source. Consumers will almost certainly see the jacket and know that it is a Margiela product. (Note: There is a chance that consumers may think the jacket resulted from a collaboration with Burberry, especially since dual-branded collaborations are not an entirely uncommon occurrence in fashion, which would be demonstrative of consumer confusion).
2. The outcome is arguably different, however, if Margiela plans to manufacture and sell the jacket after showing it on the runway. While consumers still would not likely be confused as to the source of the jacket if it is being sold exclusively in Margiela stores, Burberry has a strong claim for likelihood of confusion if the jacket is sold in non-Margiela stores alongside other brands’ goods.
Moreover, Burberry could probably make a case that even if the jacket is sold exclusively in Margiela-owned and operated stores, consumers might still be confused after the fact. This is called post-sale confusion (aka confusion that occurs after the initial point of sale). This theory does not bode well for Margiela, as if a consumer were to see the jacket on the street, they would almost certainly assume that it was a Burberry coat, thereby resulting in confusion.
It is also worth noting that the "first-sale doctrine" will not help Margiela here. For the uninitiated, the first-sale doctrine states that once a trademark owner releases its goods into commerce, it cannot prevent the subsequent re-sale of those goods by others. While this sounds like it just might prove helpful in the case at hand (assuming someone at Margiela purchased an authentic Burberry garment, cut the printed fabric from that garment, and used it to make the coat at issue), there is a catch.
In terms of the sale of trademark-protected goods, the general rule is that a subsequent sale is unlawful if "material differences" exist between the authorized goods (the legitimate Burberry garment that was used to make the Margiela jacket) and the goods at hand (the Margiela jacket). This would likely prevent any legally-permissible sales of the Margiela jacket at play here since the original Burberry garment would have been altered in its entirely to make the Margiela jacket.
As for whether the sale or no sale distinction would affect a claim of trademark dilution (a claim designed to protect famous marks from uses that blur their distinctiveness or tarnish their reputation), it likely would not. This is because unlike trademark infringement, claims of dilution do not require a showing of confusion. As such, Margiela showing the jacket on its runway would – in theory – be enough to make a claim of dilution.
While Burberry is something of a fierce protector of its brand and the corresponding intellectual property (you may recall it sued rapper/producer Burberry Perry for trademark infringement and dilution last year for using its name), this probably will not amount to full blown litigation. At the same time, we likely will not be seeing this jacket in Margiela stores anytime soon.
Representatives for both brands were not immediately available for comment.