During the presentation of Hermès’ remarkable results, the CEO of Hermès commented on the Walmart copycat of the Birkin bag which recently created a huge buzz, putting the focus on the “excessive” price of the Birkin bag. Mr. Dumas emphasised the notion of value and that any price raise was inherently linked to the quality of materials and of craftsmanship.

If his declaration felt authentic and true (he made a point of saying he had a corporate answer but would give his personal thoughts) it was also astute from a PR perspective by downplaying the importance of this cheap copy and positioning Hermès on the high ground all the while empathising with would be Hermès clients who don’t have the means… But he also made the hill much steeper for his lawyers in the fight against dupes. How so? Breaking it down:

MR. DUMAS: « It’s difficult to know what, exactly, to think about it apart from the fact that it irritated me — annoyed me, » he said.

IP TRANSLATION: Copies are not illegal but simply annoying or irritating

MR. DUMAS: « Making a copy like this is quite detestable —it’s stealing the creative ideas of others, »

IP TRANSLATION: Suggesting that the Birkin bag is a “creative idea” amounts to saying its in the public domain as ideas are not protectable.

If his declaration felt authentic and true (he made a point of saying he had a corporate answer but would give his personal thoughts) it was also astute from a PR perspective by downplaying the importance of this cheap copy and positioning Hermès on the high ground all the while empathising with would be Hermès clients who don’t have the means… But he also made the hill much steeper for his lawyers in the fight against dupes. How so?

Breaking it down:

MR. DUMAS: « It’s difficult to know what, exactly, to think about it apart from the fact that it irritated me — annoyed me, » he said.

IP TRANSLATION: Copies are not illegal but simply annoying or irritating

MR. DUMAS: « Making a copy like this is quite detestable —it’s stealing the creative ideas of others, »

IP TRANSLATION: Suggesting that the Birkin bag is a “creative idea” amounts to saying its in the public domain as ideas are not protectable.

MR. DUMAS: Dupes aren’t technically a counterfeit since the sellers aren’t marketing them as the real thing.”

IP TRANSLATION: it therefore suffices to clarify that your dupe (or even classic trademark counterfeit) is not the real Birkin to escape any liability?

Mr. DUMAS: “It was touching to read on the social media “we respect Hermès but we can’t afford it so in the meantime…” “I end up seeing Wirkins as a compliment in a way”.

IP TRANSLATION: Suggesting that a copy is a compliment makes it difficult to then argue that it causes you harm through dilution or other grounds.

MR. DUMAS : “ no one is buying the $80 Wirkin and expecting it to be the real thing…”

IP TRANSLATION: Mr. Dumas therefore excludes any notion that there might be a risk of confusion – a concept which is critical to succeed in cases based on unfair competition or passing off.

MR. DUMAS: “There is a corporate position but in the reality there is an ambiguity which you have to face up to.” And thus, in one declaration, Mr. Dumas has practically given his blessing to the dupe market.

Dupes are a head ache for any intellectual property department. They are a far worse form of infringement than trademark counterfeits for several reasons:

– One might argue that trademarked counterfeits somehow contribute to the renown of the mark by speading the name of the brand far and wide … makers of dupes on the other hand usurp iconic designs by apposing their own mark on the design. This leads only to the dilution of iconic products attacking the very identity of the brand.

– Trademark counterfeits are relatively simple to tackle owing to the efficiency of trademark laws: a trademark owner can work directly with police or custom authorities as well as platforms to operate take downs of seize goods and even destroy them without having to pass through the lengthy route of court proceedings.

– Conversely, dupes / copycats/ lookalikes must rely on an array of different legal tools which will be examined very differently from one jurisdiction to another. The issue is all the more difficult that often, iconic products have been around for many years and if they ever did have an industrial design protection, such rights have expired.

A few recent examples show the complexity of the fight against dupes. In the absence of registered design rights, copyright is a fallback. But the criteria of originality and its interpretation will vary from country to country and indeed may evolve over time. Additional notions stemming from unfair competition will also be invoked but these will often require the proof of a certain notoriety and the establishment of a risk of confusion. In all cases, immediate enforcement is not a possibility – a court decision (and the delays that it implies) will be necessary before taking action.

One might be tempted to dismiss the “Gen Z” dupe culture and see it as a a touching tribute … but when your own clients are turning away from the “real thing” to adopt pris9ne copies made with the highest levels of savoir faire, what legal grounds can you rely on? The pingR phenomenon is only the high end version of the dupe culture… if you have accepted the dupe culture, what legal arguments can you then turn to to fight the pingti?

Intellectual property is a technical expertise but it’s also at the heart of any luxury business and needs to be integrated as part of the business strategy. It should not be relegated to a prompted paragraph to the CEO by a legal team. But when it is, one might hope that the CEO would stick to it trusting that there was a reason behond the corporate answer. Mr. Dumas should perhaps have kept to the corporate answer or stopped at his first sentence “It’s difficult to know what, exactly, to think about (the Wirkin)”…and then leQ it to his lawyers.

Maître Olivia Dhordain

1 https://www.youtube.com/watch?v=dMHaArB56aA – last question