タグ: Birkin

Hermes Wins Birkin & Kelly Bag’s 3D Trademark Infringement Lawsuit

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On March 9, 2023, the Tokyo District Court awarded HERMES INTERNATIONAL JPY5,640,112 for infringement of its trademark right pertinent to the 3D shape of the Birkin bag and Kelly bag.

[Judicial case no. Tokyo District Court – Reiwa3(wa)22287]

3D mark of Hermès Birkin and Kelly Bag

HERMES INTERNATIONAL, a French luxury fashion house, has owned Japanese trademark registration no. 5438059 for the 3D shape of the “Birkin” bag and no. 5438058 for the “Kelly” bag in connection with handbags (class 25) since 2011 by successfully demonstrating acquired secondary meaning as a specific source indicator of Hermès’ luxury bags.

Birkin and Kelly Bag Imitations

Hermes sued NAO INTERNATIONAL Co., Ltd. at the Tokyo District Court for violating its trademark right and the unfair competition prevention law by allegedly selling 214 Birkin look-alike bags and 184 Kelly look-alike bags in Japan with a price tag of JPY2,270 (approx. USD20) at their brick-and-mortal shops and online shop from December 20, 2019, to February 13, 2021.

Court decision

The Tokyo District Court found that the defendant’s bags respectively resemble 3D marks representing Hermès Birkin and Kelly Bag in an appearance on the ground that the defendant’s bags contain a basic and unique configuration enabling to distinguish Hermès Birkin and Kelly Bag from others. A difference in details is trivial and would not give rise to a distinctive impression in the mind of consumers.

Taking into consideration the fact that both bags are promoted for sale at the department store, the court has a reason to believe relevant consumers are likely to confuse the source of the defendant’s bags with Hermes.

Even though there is a severe price gap between the Hermes bag and the defendant bag, bearing in mind that authentic second-hand Hermès handbags are sold relatively at low prices, such a price gap would be anything but sufficient to negate the likelihood of confusion.

The court measured damages to recover (i) the defendant’s actual profits of infringing bags (JPY5,150,140) by reducing 20% (not attributable to goodwill on Hermès bags) for JPY4,120,112, (ii) “mental suffering” caused by an infringement for JPY1,000,000, and (iii) reasonable attorney fee for JPY520,000.

To read a full text of the Tokyo District Court decision (Japanese only), click here.

Hermès beat Birkin Bag Imitator for Trademark Infringement

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On December 17, 2020, the Japan IP High Court upheld awards for JPY2,900,000 for damages suffered by Hermès in relation to a trademark infringement and passing-off case regarding the Birkin Bag imitations.
[Court case no. Reiwa2(Ne)10040]

Hermès Birkin Bag

HERMES INTERNATIONAL, a French luxury fashion house, has owned Japanese trademark registration no. 5438059 for the 3D shape of the “Birkin” bag in connection with handbags of class 25 since 2011 by successfully demonstrating acquired secondary meaning as a specific source indicator of Hermès’ luxury bags.

The iconic Birkin bag was firstly created for Jane Birkin in 1984. It is known for its superior craftsmanship and jaw-dropping price tag, with standard models starting around JPY1,000,000. Its annual sales figures exceed 3,000 in 1998, 8,000 in 2003, and 17,000 in 2009.

Birkin Bag Imitations

Hermes sued Kabushiki Kaisha Tia Maria at the Tokyo District Court for violating its trademark right and the unfair competition prevention law by allegedly promoting 100 or more Birkin look-alike bags (see below) in Japan with a price tag of JPY27,300 from August 2010 to February 2018.

Court decision

On June 3, 2020, the Tokyo District Court decided in favor of HERMES INTERNATIONAL and awarded damages for trademark infringement and passing-off in the amount of JPY2,900,000.
[court case no. Heisei31(wa)9997]

In the decision, the Tokyo District Court found that Hermès Birkin Bag has acquired distinctiveness and become remarkably famous as a source indicator of Hermès’ luxury bags by 2009.

Besides, the court held that defendant’s goods constitutes an infringement of the 3D shape of the “Birkin” bag trademark since both are confusingly similar in view of the following aspects:
(a) a distinctive three-lobed flap design with keyhole-shaped notches to fit around the base of the handle, (b) a dimpled triangular profile, (c) a closure which consists of two thin, horizontal straps designed to fit over the flap, with metal plates at their end that fit over a circular turn lock, (d) a padlock which fits through the center eye of the turn lock and (e), typically, a key fob affixed to a leather strap, one end of which is affixed to the bag by wrapping around the base of one end of the handle.

Screen capture of TIA MARIA’s website (http://tiamaria.zf.shopserve.jp/SHOP/V1172S.html)

The court measured damages to recover (i) defendant’s actual sales of infringing bags (JPY2,730,780) by subtracting appropriate variable cost (40% of the offered price) for JPY1,638,468, (ii) “mental suffering” caused by an infringement for JPY1,000,000, and (iii) reasonable attorney fee for JPY260,000.

The district court decision was challenged by the defendant before the High Court to set aside or vary it, however, the IP High Court dismissed the appeal entirely and sided with HERMES INTERNATIONAL.

To read a full text of the IP High Court decision (Japanese only), click here.