Written By: Gabriella Fortugno (IP Lawyer)
The Walmart™ “Wirkin” bag, a $100 “dupe” of the iconic $10,000 Hermès Birkin bag, highlights trademark law issues surrounding distinctive designs of products.
Product Dupes and Trademark Infringement
Generally, “dupes” aim to provide similar aesthetics or functionality as a luxury or iconic brand at lower price. If the dupe is merely inspired by an original trademarked design, it is not trademark infringement. However, if the dupe attempts to replicate or copy a trademark owner’s name, logo, or design and creates a likelihood of consumer confusion, the production, use, and sale of the dupe constitutes trademark infringement. Consumer confusion occurs when consumers mistakenly believe that a product originates from the trademark owner due to similarities in the names, logos, packaging, or designs.
Trademark Owner’s Rights in their Unique Designs
Trademarks are a source indicator, rooted in the consumers’ perception that a unique name, logo, or design indicates the source of the good. This includes the unique appearance or design of a product, ornamental designs, and the 3D shape of the product itself as long as it has acquired distinctiveness as being associated with the trademark owner.
The owner of a registered trademark has the exclusive right to that trademark and can prevent others from using the mark. When the trademark is for the design of a product itself, the trademark owner has the exclusive right to that design and can prevent others from producing lookalikes.
Hermès owns trademarks for the unique Birkin bag design, the Kelly bag design, the bag hardware, and the iconic orange box. Other than the price tag, the Wirkin does not appear to have unique features that clearly distinguishes it from the original Birkin. Without additional distinguishing features, the design of the Wirkin, as the coined name suggests, infringes Hermès’ trademarks.
Trademarks to Protect Unique Designs: Trade Dress and 3D Marks
Unique designs and products that have acquired distinctiveness can be protected through trade dress and 3D trademarks.
Trade Dress: Protects the overall appearance and specific visual and ornamental elements such as its design, shape, color, or texture, if it’s distinctive. For example, the shape of the glass Coca-Cola™ bottle and the Grey Goose ™ bottle, the shape of the Toblerone™ chocolate bar, and the position of the LEVI’S™ ribbon tab are protected features.
3D Marks: A subset of trademarks that protects the look-and-feel of a brand through three-dimensional objects and the three-dimensional shape of goods themselves. For example, the McDonald’s™ drive thru window, the Mobil™ gas station canopy, the PopSocket™ phone grip, the OPI™ nail polish bottle, and the Fila™ Disruptor shoe are protected as three-dimensional marks.
If you want to discuss protecting your unique designs, or if you have any questions about protecting your unique product designs through trademarks, please do not hesitate to contact one of our experts today!
