Luxury fashion brand Hermès has recently been successful in defending its iconic Kelly and Birkin bags against a company called Blao & Co, who were found to have infringed copyright that subsists in the bags and one of Hermès’ trade marks by selling physical products as well as non-fungible tokens (NFTs). The case was heard by the Tribunal Judiciaire de Paris in France.
Hermès has been selling the Kelly and Birkin bags since the 1930s and 1980s, respectively, and owns copyright in the bags, as well as a three-dimensional trade mark for the padlock closure that is affixed to the bags, which was registered in 2003. Comparatively, Blao only started selling handbags in 2021 under the name NDG.
In 2022, Hermès discovered that Blao had been marketing products similar to its bags online, through social media, the NDG website and on the NFT marketplace OpenSea. In response, Hermès sent formal notice requesting that Blao ceased marketing the bags and NFT. Blao responded after four requests were made to state that the bags and NFT had been removed from sale, but it was clear that they were, in fact, actually still being marketed. Hermès then brought an action for trade mark and copyright infringement later that year.
Hermès presented the court with substantial evidence to prove its ownership of copyright in the bags and the court agreed with its position that the bags are original works within the law of copyright and therefore copyright does subsist in the bags. In assessing infringement, the court outlined that the method of establishing infringement is by looking at the similarities not the differences between the products and therefore, on assessment, Blao had reproduced the bags in whole by creating its physical products and NFT.
In relation to trade mark infringement, Hermès’ argument centred around the fact that the padlocks and the shape of the accompanying closure system of the Blao products were either identical or highly similar to those of its own which creates a likelihood of confusion for the public. Blao argued that these features could not be identical because its padlock had NDG printed on it rather than Hermès which would negate any confusion. The court agreed with Hermès’ position and held that a likelihood of confusion does exist and therefore there was infringement in relation to the physical products and NFT.
If you have any questions on the above, please do not hesitate to contact the team at McDaniels Law on 0191 281 4000 or legal@mcdanielslaw.com.
