In June 2020, Hermes was successful in the Tokyo District Court with regards to its trade mark infringement and passing off claim against Kabushiki Kaisha Tia Maria (“Tia Maria”), in respect of its iconic Birkin bag.
Subsequently, Tia Maria, who sell handbags, appealed to the Japanese IP High Court arguing that the difference between the bags can be easily distinguished; it argued the shape of its handbags differs from the registered 3D shapes of the Birkin bag. Furthermore, it claimed differences in the quality and the price of the bags; the Birkin bags cost upwards of $10,000 and the Tia Maria bags cost between $192 and $289. In conclusion, it argued there will be no consumer confusion.
The Court was unpersuaded with Tia Maria’s arguments. It held that Tia Maria’s goods are likely to cause confusion and deemed the goods to be similar.
On the basis that Tia Maria sold “at least 100 bags”, which was decided in the first action, the Court ordered it to pay $27,973 in damages.
If you have any questions about this or any other IP issue, please get in touch with the team on 0191 281 4000 or by email at firstname.lastname@example.org.Posted by: Megan Walker in: EU/International, Passing Off