Hermès successfully protects rights in design of Birkin and Kelly bags

South Korea

On January 29 2015 the Seoul Central District Court issued an injunction order against Suwa United Corporation, a Korean corporation, for violating the new catch-all provision of the Unfair Competition Prevention Act (UCPA). Suwa United is now prohibited from manufacturing or selling polyester bags on which images of Hermès' iconic Birkin and Kelly bags are printed.

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      Hermès’ bags               Suwa United’s bags

The District Court found that Suwa United's activities constituted unauthorised infringement of Hermès' right to profit. Suwa United used Hermès' famous bag designs (which Hermès produced through considerable effort and investment) for the benefit of its own business, in violation of the catch-all provision of the UCPA.

The District Court specifically recognised that the shapes of Hermès' Birkin and Kelly bags had achieved such iconic status that they were now perceived as source identifiers for Hermès, due to Hermès' substantial investment and effort (including extensive advertising and continuous, long-term monopolistic use of the designs).

The fact that Suwa United's products were made of a different material than Hermès' products (polyester instead of leather) and were sold at significantly different prices was deemed irrelevant by the District Court, since the act of copying the shapes of the famous Birkin and Kelly bags without Hermès’ authorisation was contrary to fair commercial practice. Moreover, Suwa United clearly intended to free-ride on the reputation that Hermès had acquired in its bags so as to increase the sales of its own products.

The District Court also noted that Suwa United could not have achieved such level of sales (Suwa United's products were very popular in Korea for a certain period of time) without copying the shapes of the famous luxury bags. The District Court concluded that, in order to find that an act of unfair competition or an illegal act under the Civil Code had been committed, an infringer and its victim need not be engaged in direct competition, nor must the infringing products be a direct replacement of the genuine products.

The District Court also awarded KRW100 million (about $90,000) in damages to Hermès and Hermès Korea.

This case is currently under appeal before the High Court.

Ann Nam-Yeon Kwon, Alexandra Bélec and Seung-Hee Lee, Kim & Chang, Seoul

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