THE FASHION LAW EXCLUSIVE - Mansur Gavriel has filed a lawsuit this week in federal court, alleging that a number of Italian brands have copied its “most well-known and popular handbag, its distinctive bucket bag.” According to the young New York-based brand’s lawsuit, which was filed in the Southern District of New York on Wednesday, “After Mansur Gavriel’s bags achieved prominence and acquired distinctive trade dress, Defendants [Pelletteria Pierre S.N.C. DiScarselli Roberto & C., Bruna Rosso S.N.C., and Hobbs Group S.R.L.] adopted and began selling the nearly identical [bags].” And identical the bags are!
As a result, Mansur Gavriel is suing based on federal and common law trade dress claims, amongst others, in connection with its industry “it” bag, the bucket bag. For the uninitiated, trade dress is the overall commercial image of a product that indicates or identifies the source of the product and distinguishes it from those of others. It may include the design or shape/configuration of a product, and can consist of such elements as size, shape, color and texture.
According to Mansur Gavriel’s lawsuit, the “unique and distinctive trade dress of the MG Bucket Bag [pictured below, left] includes the combination of the following features: (1) a bag constructed from two pieces of leather that are cut, folded, and sewn to create a design that is clean and crisp, structured and sleek, rigid and minimalist in design, (2) contrasting interior and exterior colors, (3) minimal stitching and hardware, (4) a brand logo in small metallic font centered at the front bottom of the bag, (5) a drawstring closure cinched through openings with no hardware or very subtle hardware, and (6) a long adjustable strap with flat construction and subtle metal detailing.”
After learning about the sale of the allegedly infringing bags [above, right] on websites, including www.brunarosso.com and www.h- brands.com, Mansur Gavriel alleges that it sent the defendants a number of cease and desist letters, alerting them of the trade dress protections that reportedly exist in the bucket bag and demanding that they cease all sales, but the defendants have not been deterred. The complaint states that “Defendants are intentionally targeting and are sell the infringing bags to Plaintiff’s customers and potential customers and consumers who are familiar with Plaintiff’s well-known MG Bucket Bag trade dress and the trade dress of Plaintiff’s associated handbags and related goods.” As a result, MG wants the court to order the defendants to cease all manufacture and sales of the bags and to award the designers damages.
But not so fast. The bags at issue are, in fact, almost identical, and the defendants’ sale of other lookalike bags from Mansur Gavriel is certainly damning, but if this seems like it might a tough case for Mansur Gavriel to win, chances are, it is. There are at least a few rather problematic elements at play. Here is one …
Mansur Gavriel’s designs are almost entirely based on existing staple handbag designs. The bucket bag is proof of that. As a result, it would likely be difficult for them to show that the bucket bag has achieved the requisite level of secondary meaning in the minds of consumers to trigger trade dress protection in the first place. While the designers claim in the lawsuit that they have built up a substantial amount of goodwill in connection with the bucket bag, I think this claim is likely quite limited.
In order to make a substantial case for trade dress, they would have to show that consumers – average consumers (not just NYC fashion consumers) – have come to recognize the bucket bag as an indicator of source (aka an indicator of their brand), and outside of New York and other fashion capitals. This is an easy case for Hermes with its Birkin bag. For Mansur Gavriel's 4-year old bucket bag, this could be a very difficult. Thoughts?