Scope of protection for Hermès' Birkin bag trademarks

In two recent cases before the Copenhagen Maritime and Commercial Court Hermès  failed in claims for alleged infringement of several registered trademarks depicting its renowned Birkin bag.

The cases concerned two Danish importers (In-Hatex v/Carl Aage Andersen and Handelsselskabet Rudi and Harald Nielsen A/S), which had imported and sold some bags made of plastic. Hermès International SA claimed that the bags infringed Hermès’ copyrights as well as trademark rights in the Birkin bag.

In both cases the court found that the Birkin bag was protected by copyright, but that the importers’ bags were not sufficiently similar to the Birkin bag to constitute copyright infringement.

Hermès owns various figurative and three-dimensional trademarks depicting details of the Birkin bag, as well as the bag in its entirety. With respect to the alleged trademark infringements, the court stated that the importers’ bags were not confusingly similar to the registered trademarks owned by Hermès. In this respect, in the case against In-Hatex, the court mentioned that although a number of detail imitations could be observed on the importer’s bags, there was a similar number of differences. Further, the court concluded that since Hermès’ trademarks consisted of “the shape of the bag” – and since the trademark registrations included no protection for the ideas and principles behind the bag – the importer’s bags did not infringe any of the registered trademark rights owned by Hermès.

In the case against Handelsselskabet Rudi and Harald Nielsen A/S, the court referred to the fact that the overall impression of the bags was sufficiently different to avoid a finding of trademark infringement.

Finally, the court found that the importation, marketing and sale of the bags were not in violation of the Danish Marketing Practices Act provisions on lookalikes.

(The genuine Hermès Birkin bag)

 (The alleged infringing Birkin bags)