Hermès fails to prove infringement of rights in Birkin bag

On July 7 2009 the Danish Maritime and Commercial Court issued decisions in Hermès International SA v In-Hatex (Case V-123/07) and Hermès International SA v Handelsselskabet Rudi og Harald Nielsen A/S (Case V-3-08, July 7 2009), which both involved Hermès International SA's rights in the Birkin bag.
Hermès owns various figurative and three-dimensional trademarks consisting of details of the Birkin bag, as well as the bag as a whole. Danish companies In-Hatex and Handelsselskabet Rudi og Harald Nielsen A/S both imported bags and leather goods to be sold to Danish distributors. Hermès claimed that some of the bags infringed its copyright and trademark rights in the Birkin bag. The imported bags were sold at prices between Dkr130 and Dkr359, while the starting price of the Birkin bag is Dkr54,000. In both cases, the court found that the Birkin bag enjoyed copyright protection, as the design was not entirely functional. 
In Hermès v In-Hatex, the majority of the court considered that the bags imported by In-Hatex were not a slavish imitation of the Birkin bag. Consequently, under established case law, there was no infringement of Hermès's copyright. 
The majority then considered whether the imported bags infringed any of Hermès's trademarks. The court held that the shape of the Birkin bag, and not the 'idea' of the bag, enjoyed trademark protection. Even though the imported bags imitated certain aspects of Hermès's trademarks, they also displayed features that clearly differed from the Birkin bag. The court thus concluded that the bags did not infringe any of the marks held by Hermès.
Finally, the majority found that the import, marketing and sale of the bags by In-Hatex did not violate the Danish Marketing Practices Act, as the bags differed from the Birkin bag with regard to quality and distribution channels, among other things.

In contrast, the minority of the court held that:

  • the imported bags were a slavish imitation of the Birkin bag; and
  • consumers might be led to believe that there was a link between Hermès and the manufacturer of the imported bags.
Accordingly, the minority stated that the imported bags infringed Hermès's rights under the Copyright Act, the Trademark Act and the Marketing Practices Act.
In Hermès v Handelsselskabet, the court found that there was no doubt that the designer of the bags imported by Handelsselskabet had been inspired by the idea behind the Birkin bag. However, the most conspicuous features of the bags were their colour and the material used (rubber), while the details of the Birkin bag had not been copied. The court concluded that the bags constituted a very basic imitation of the Birkin bag and, accordingly, did not infringe Hermès's copyright.
With regard to the trademark infringement claim, the court found that the overall impression of the imported bags was very different from that of the Birkin bag. Therefore, no trademark infringement had occurred.
Finally, the court found that Handelsselskabet had not infringed the Marketing Practices Act because the quality and price of the bags in question were different.
Nina Ringen, Plesner, Copenhagen

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