Hermès has landed a notable win in a case that has implications for physical luxury goods and digital representations, alike. In a decision on February 7, a French court ruled in favor of Hermès in its dispute with Blao&Co, a French company that Hermès accused of copyright and trademark infringement in connection with its sale of handbags that mirror its coveted Kelly and Birkin bags – along with a non-fungible token (“NFT”) tied to an image of one of the allegedly infringing bags. In addition to affirming Hermès’ exclusive rights in the creative elements of its Kelly and Birkin bags, the court held that the prominent padlock design that appears on both handbag styles is a valid trademark that consumers view as an indicator of the Hermès brand.
A Bit of Background: Hermès filed suit against Blao&Co back in 2022, arguing that the company, which sells handbags under the NDG Paris brand, was infringing its copyright and trademark rights in the Kelly and Birkin bag designs (namely, the trapezoidal silhouette, reinforced structure, closure mechanism, and unique detailing) as a result of its sale of lookalike bags and a corresponding NFT, which it made available on the NFT marketplace, Opensea.
In response to Hermès’ lawsuit, Blao&Co (unsuccessfully) looked to chip away at the company’s copyright claims, arguing, among other things, that the Kelly and Birkin bags are not eligible for copyright protection on the basis that their design elements are common in luxury leather goods and thus, do not rise to the level of originality necessary for copyright protection. In terms of Hermès’ trademark claims, Blao&Co maintained that the padlock that appears on Hermès’ bags is a standard and functional component used by multiple luxury brands and is not exclusively associated with Hermès.
At the same time, Blao&Co argued that the presence of its own brand name, “NDG,” on the padlock of its paisley-printed bags was sufficient to alert consumers about the source of the bags and thereby, prevent confusion.
A Sweeping Win for Hermès
Unpersuaded by Blao&Co’s defenses, the Paris Court of Justice sided with Hermès on multiple fronts, finding that its copyrights in the Birkin and Kelly bags are valid and similarly holding that the padlock configuration is, in fact, an indicator of source protected by trademark law. As such, the court awarded Hermès monetary damages, as well as injunctive relief to bar future sales of infringing products and to order to removal of the NFT. A few of the top-line takeaways …
Birkin and Kelly Copyright: The court held that the Birkin and Kelly bag designs are protectable by copyright, as “the combination of the characteristics of the particular shapes and details of the flaps and closing systems … give each of these bags a singular appearance, bearing the imprint of the personality of their author.”
Padlock Trademark: In terms of the padlock element, the court stated that “in the eyes of the relevant public, the padlock incorporated into the three-dimensional sign [is] one of [the bag’s] particularly distinctive elements, allowing [the public] to associate it with the image of the trademark in dispute at the conceptual level.”
The Handbag NFT: Finally, the court focused on the NFT that Blao&Co offered up (which Hermès argued exacerbated the infringement at play) and applied the same findings as above. This aspect of the case is particularly noteworthy, as Hermès does not offer up NFTs or digital goods of its own, which means that the court was willing to extend Hermès “real world” rights (i.e., those that it maintains for its name and distinctive physical handbags, as well as e-commerce services) to the virtual world. This is not surprising (a court in the U.S. did the same thing in Hermès’ trademark infringement case against MetaBirkins-creator Mason Rothschild); it is noteworthy, as it is believed to be one of the first examples of a French court taking on a case involving NFTs/virtual products.
Damages and the Differences at Play
With regard to “the negative economic consequences of the infringement,” including the promotion of the infringing bags by “many influencers around the world,” the “moral damage caused, and the profits made by the infringer,” the court made mention of the elephant in the room. That is the striking difference in between the two companies’ bags and their prices, and thus, the respective companies’ customers, which stand to have a significant impact on the potential for confusion.
The court held that “the customers of Hermès and the Blao&Co company are very different and obviously do not have the same means to devote to the purchase of handbags or travel bags.” The court also noted that the NDG Paris bags are “of a much lower quality of manufacture and material, produced in China and sold wholesale for [between] 24.50 euros and 31.50 euros per unit.” (Hermès’ Birkin and Kelly bags sell for upwards of $10,000, whereas the NDG Paris bags, which were manufactured in China, sold for roughly $250.) As such, “the loss of earnings [for Hermès as a result of the] counterfeiting … is minimal in view of these circumstances.”
Even still, the court ordered Blao&Co to pay €220,000 in damages for its copyright infringement and trademark infringement/counterfeiting, along with €15,000 in expenses (under Article 700 of the French Code of Civil Procedure) to Hermès.
The case is Hermès International v. S.A.S. Blao & Co., RG n° 22/09210.
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