There are a lot of garments and accessories out there that are head-scratchingly similar to pre-existing designs; ones that are so similar that it really is curious as to how or why the original design brand has not slapped the copycat with a scathing cease and desist letter or a strongly-worded lawsuit and wiped the infringing design out of existence. One such design is the Hermès Kelly lookalike bag that London-based brand, Mawi, has been offering for quite awhile now.

I’ve been meaning to write about the Mawi bags for sometime. The first time I saw such a bag, it was on the arm of a famous blogger, who at the time, I assumed had bejeweled an Hèrmes Kelly bag with the word “Thief” or “Dealer” or “Drug Money” or whatever version she was toting. Upon closer inspection, I realized that was not the case. Not terribly long thereafter, Madonna posted a photo to her Instagram of herself holding the “Dealer” version of the bag, prompting just about every fashion site to write about it. Other sightings include placements in Vogue Italia, Nylon, and other editorials, and in street style shots, including one featured recently on Fashionista, which prompted this article.

 Hermès Kelly bag (left) & Mawi's

Hermès Kelly bag (left) & Mawi’s “Thief” bag (right)

So, how can Mawi get away with replicating an Hermès Kelly bag, slapping a word on it, and charging £785 (or nearly $1200) for it? It is unclear. However, here is what we know…

HERMÈS’ LEGAL RIGHTS IN THE KELLY BAG

Hermès, the Paris-based design house that launched the bag that was largely popularized in the 1950’s when Grace Kelly adopted it as her go-to bag (thereby, prompting the name), likely has at least one form of legal protection when it comes to the Kelly bag:  federal trade dress.  As you may know, trade dress is a sect of trademark law that protects 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 of a product, itself.

Trade Dress Infringement

Hermès has trade dress registrations for the Kelly bag as a whole (“a handbag, having trapezoidal sides, a rectangular bottom, and a dimpled triangular profile. The top of the bag consists of a rectangular flap having a protruding rectangular center portion that fits beneath a horizontal rectangular strap having an opening to receive a padlock eye. A lock in the shape of a padlock forms the clasp for the bag at the center of the strap”); the top closure portion of the bag; and the configuration of the hardware.

As a result, if another brand recreates the trade dress of the Kelly bag or even just of its top closure portion in a way that would likely be confusing to consumers, that other brand would be liable for trade dress infringement. (Note: consumer confusion is the key to trademark and trade dress infringement claims).

With this in mind, Hermès likely has a very strong claim of trade dress infringement because Mawi has copied its trade dress-protected Kelly bag and recreated it nearly exactly in the same class of goods (bags). As a result, there is certainly an argument given the similarity of the appearance/design of the Mawi bag to the Hermès Kelly bag that consumers could be confused as to the source of the Mawi bag. And as we’ve told you in the past, the “likelihood of confusion” standard for trademark/trade dress infringement is not as straightforward as it sounds. Such “confusion” includes the likelihood that consumers will believe that the original trademark holder (Hermès, here) is sponsoring, endorsing, or is somehow affiliated with the other party (Mawi) or its products. This is increasingly easy to meet, I think, given the commonality of designer collaborations and the like.

Trade Dress Dilution

But Hermès has another claim, aside from trade dress infringement, and it comes by way of trade dress dilution. Dilution differs from normal trademark and trade dress infringement in that there is no need to prove a likelihood of confusion, nor is there any need to show competition between the goods of the plaintiff and the defendant. Essentially, all that is required is that use of a “famous” mark (such as the Kelly bag trade dress) by a third party causes the dilution of the “distinctive quality” of the mark.

Dilution typically occurs as the result of blurring or tarnishment of the famous mark. Blurring, which is one type of dilution, occurs when the use by another weakens the distinctiveness of a famous mark.

More interestingly for us in this (hypothetical) case, however, is dilution by tarnishment. This is the weakening of the distinctiveness of a famous mark, usually through inappropriate or unflattering associations. As IP WatchDog’s Beth Hutchens noted, “A trademark is tarnished when an infringing mark portrays the infringed mark in a negative light, usually in the context of sex, drugs, crime, etc. It can also happen if the infringer is offering low quality goods. The thought is that a tarnishing use of a mark threatens to destroy the commercial value of the mark because people will associate the lack of quality of the infringer’s goods with the plaintiff’s unrelated goods, or because the infringer’s use reduces the trademark’s reputation as a wholesome identifier of the owner’s products or services.”

Here, it seems that both elements are at play. Primarily, Mawi is offering bags that utilize Hermès’ Kelly trade dress but that also incorporate arguably unflattering associations by way of the “Thief” or “Dealer” or “Drug Money” crystal inscriptions that appear in the bags.  Chances are, Hermès, a family-owned house, with its storied history and dedication to its core values of “tradition” and “refinement,” etc., deems associations with drug dealers and thieves to be very “off brand” and damaging. In the luxury sector, it is likely not a stretch to assume most brands do not want to be associated with these things and rightfully so.

It is also worth noting that quality is firmly rooted in the Hermès DNA. This is problematic, as Mawi’s $1200 bags certainly would not live up to the standard that Hermès expects for its goods, which is extremely high. As you may know, Hermès craftsmen are highly skilled; they train for years before they are authorized to make bags for the design house. This is likely not the case for those making Mawi’s bags, and as a result, there will be a difference in quality. This information would prove helpful in establishing a claim of trade dress dilution by tarnishment.

THE PARODY DEFENSE

It is worth noting, especially on the heels of the recent Louis Vuitton v. My Other Bag ruling, that if faced with a lawsuit that Mawi would likely claim parody. The brand would likely assert that it is making some social commentary with its addition of the “Thief” or “Dealer” or “Drug Money” slogans on bags that purposely look a whole lot like the Hermès Kelly bag, and that as a result, such commentary is protected speech under the First Amendment. As for whether Mawi could make a real case for itself in connection with the parody defense and whether the court would buy it is another story. Because courts tend to vary quite significantly in their rulings on parody and because such rulings are very case-specific, we won’t dive into the parody defense now. Just keep in mind that if this case were to materialize, parody is almost certainly something that Mawi’s legal team would rely on.

WHY HASN’T HERMÈS FILED SUIT?

This really is the unanswered question here. It seems that Hermès has very solid grounds to pursue both trade dress infringement and dilution claims and yet, it has failed to do so over the several years that the Mawi bags have been on the market.

Looking at Hermès’ legal history over the past decade or so, the house has filed far fewer lawsuits compared to similarly situated houses. In fact, one of the last major lawsuits that Hermès initiated was the one it filed in 2011 against Thursday Friday, Inc., the maker of canvas tote bags, one of which featured a drawing of a Birkin bag on it. In a strongly-worded lawsuit, which was later settled out of court, Hermès accused the tote bag maker of “riding on the reputation and recognition of the world-renowned Birkin bag to sell its otherwise generic tote bags.”

Interestingly, though, for whatever reason, Hermès simply does not file as many intellectual property-related lawsuits as many of the other iconic fashion houses, which may explain why Mawi is operating in the clear … at least for now.