Hermès makers of the most expensive bag in the world, is suing Birkin Bag imitators for Trademark & Trade dress infringement.

Hermès French luxury goods manufacturer is suing Birkin Bag Imitators for trademark and trade dress infringement, unfair competition and dilution by tarnishment. The case Hermès International v. Emperia, Inc. et al., 14-CV-03522 (C.D. Cal. 2014), was filed on the 7^th may against Emperia, Inc., Anne-Sophie, Inc. and Top’s Handbag, Inc. for selling infringing knockoffs of the iconic Hermès Birkin bag to online retailers Charming Charlie and JustFab.

The Hermès Birkin bag, has been described as one of the most famous handbags in the world and in 2012, Hermès unveiled four new diamond-studded Birkin handbags, 2 years in the making, designed by Pierre Hardy, each worth around $1.9 Million. The Birkin handbag, has evolved into a stylish symbol of wealth over the years. While a brand-new Birkin is priced by the French fashion house at around $8,000, some models are so expensive there is a waiting list. Some bags even come with feet, like this bag that sold at auction for $125,000, with the most expensive, the Hermès Diamond with Gold Birkin bag selling at auction for $203,150, last year.

Renowned and respected British fashion commentator Colin McDowell in an article over at the Business of Fashion, late last year commented that “astronomically priced products are emblematic of exactly what’s wrong with the fashion business.” While, the Goss-IPgirl is reserved to agree, whatever happened to what Tom Ford found – “and we found after much research that, actually not much research, quite simple research, that the counterfeit customer was not our customer.” In other words, that luxury fashion brands are not that concerned in going after fast fashion counterfeit retailers?

The Defendants accused handbags seen below sell at wholesale prices of between $15.00 and $20.00, and Hermès argue that by their actions the Defendants have sought to take unfair advantage of the fame and reputation of the Birkin Bag, by leading people to believe that Plaintiff has engaged in the licensing of the design of its handbag in connection with inexpensive goods, so as to tarnish Plaintiff’s reputation for quality and commercial integrity.

Despite the high price of the Birkin Bag, Hermès argue that it is generally recognised by consumers due to considerable coverage by the press and its inclusion in story lines of television shows, such as Sex and the City. It is argued by the French manufacturer, that because of the enormous sales, extensive advertising and media coverage, the Birkin Bag’s has become so distinctive its shape has acquired secondary meaning and developed into a famous trademark.

It is argued by the French brand, that the design configuration of the Birkin Bag has become so well-recognised that the U.S. Patent and Trademark Office has determined that it acquired sufficient distinctiveness to merit a registration.

The shape of the bag is a registered trademark here.

According to the complaint, Emperia, began taking orders from the online retailer Just Fabulous, Inc. (“JustFab”), which does business as JustFab.com, for a handbag which closely imitated the  design of the Hermès Birkin Bag, shipping over 3000 units of this knockoff Birkin Bag to JustFab. Despite allegedly receiving cease and desist letters, and actual knowledge of the rights of Hermès in the Birkin Bag trademark the Defendants continued to expand and sell additional knockoff designs.  

The Goss-IPgirl finds this yet another fascinating case for the world of IP and Fashion.  Hermès is seeking injunctive relief, damages, statutory treble damages, costs, and accounting of profits.

More on this case soon… 

Did Moschino’s Debut Fashion collection Dilute McDonald’s Trademark? An EU & US perspective

Drawing a comparison between fast food and fast fashion, Moschino's new creative director, Jeremy Scott, took inspiration from McDonald's for his debut runway collection during Milan Fashion Week. The capsule collection that is being lapped up faster than you can say ‘milkshake with fries,’ turned McDonalds Golden trademarked arches into a curved heart-shaped 'M for Moschino and, weighing in at more than just a few pounds, Moschino's red, happy meal style quilted leather bags, served up on a red tray have already sold out at a price of $1,265.

Nonetheless, despite the success of the debut collection, the striking iconic trademarked references used, in particular left many of us questioning whether there were any legal implications for trademark dilution or infringement. This legal academic, after Anya Hindmarch supermarket sweep ‘counter culture couture collection’ at London Fashion Week, had been given serious though to the legalimplications of Andy Warhol style pop culture references used in fashion, and on this very topic, this week over at the Business of Fashion, a very interesting and well written article  by Toronto based lawyer Anjli Patel addressed just that… ‘did the house dilute McDonald’s famous trademark?

Focusing in particular on Moschino’s use of the ’M’ logo and colours across their collection, in her article written from a US perspective, Patel notes that: “in the United States, where McDonald’s is headquartered, the owner of a famous mark that is distinctive (in this case McDonald’s) has recourse against another party (Moschino) for using a mark in a commercial context that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of whether any confusion, competition or actual economic harm occurs.”

Trademark dilution prevents others from using a mark in a way that would lessen its uniqueness. On the legal concept of dilution, Patel highlights that: “Dilution by blurring occurs when an association arising from the similarity between a mark and a famous mark impairs the distinctiveness of the famous mark, [from being identified as the a single source of its goods and services]. The law lists six factors that a court may consider in making its decision. One factor is the degree of similarity between the mark and the famous mark. For example, other than curving inwards the colours, scale and style of the heart-shaped motif are very similar, if not identical, to the Golden Arches.” Another factor “is whether the user of the mark intended to create an association with the famous mark…because of how the heart-shaped motif [is] presented in the show. [For example] applied to[the] handbag, which is placed on a fast food serving tray.” Coupled with fact that Moschino’s Fall/Winter 2014 collection is titled "Fast Fashion - Next Day After The Runway," drawing an association with fast food. The suggestion seems likely.

Putting US law aside for a moment, under European law McDonald would also be entitled to prevent Moschino from using the "M" Golden arches trademark because of their reputation in the Community, According to EU law use is prohibited if the unpermitted use “is detrimental to the distinctive character or the repute of the trade mark” or “takes unfair advantage of” the mark. In both the US and EU a dilution claim would most likely be successful, as it, unlike trademark infringement, does not require a showing of a “likelihood of confusion” amongst consumers, and it seems unlikely that most consumers are going to associate or confuse McDonalds with high fashion.

Yet, this is all speculative as no actual legal proceedings have been brought, and it seems that no legal proceedings are likely to be brought the Goss-IPgirl came across a series of tweets by McDonalds that appear to be endorsements from the fast food chain, that puts to bed any concerns about legal proceedings.

The fast food company posted an image from the Moschino show to its Facebook page, along with the following comment: “Looking good, MOSCHINO! Milan Fashion Week has never been so stylish.” 

The company also tweeted from the McDonalds official twitter page at ElleMagazine with the comment “the new fashion trend is spreading fast round here too.”

And also tweeted a comment (later retweeted by Jeremy Scott) “Do you ever look at yourself in the mirror and think, this outfit is missing a #Bigmac.”

Food for thought? I think it’s easy enough to answer that question. 

Even though no legal proceedings have been brought, it is noted that if legal action were to be taken, Moschino may be able to rely on the defence of parody, “something which has artistic merit and critical function, and is covered by law. But in the US as “the law does provide that a parody is an exception to dilution, but only if the defendant does not use the parody as a designation of source for its own goods and services. In other words, the exception does not apply when a parody is used as a trademark, and this is exactly what Moschino has done.”

In the EU & UK the law has less of a sense of humour? And under trademark law there is no defence of parody. The fact that a sign is a parody is not a specific defence to trade mark infringement under UK law, and a parody of a trade mark may also be infringing under s 10(3) of the UK Trade Marks Act 1994 if it causes trade mark dilution, or the ‘tarnishment and blurring’ of a trade mark.  This occurs when a similar sign has taken unfair advantage or caused detriment to a well-known trade mark. Lady GaGa v Lady Goo Goo, 2011 EWC

Sources: www.businessoffashion.com/2014/03/moschino-dilute-mcdonalds-trademark.html

http://www.slaughterandmay.com/media/1650943/lady-gaga-v-lady-goo-goo-a-web-based-  trade-mark-clash-applying-interflora.pdf