http://ipkitten.blogspot.com/2025/03/design-or-art-french-court-rules-that.html
On 7 February last, the Tribunal Judiciaire de Paris ruled that S.A.S. BLAO & CO (defendant) had infringed the copyright and trade mark of Société HERMES INTERNATIONAL and S.A.S. HERMES SELLIER (claimants) by producing and offering for sale its “Paisley Jane” model, as well as a non-fungible token (NFT) representing that same bag [Judgment available here, in French]. Pursuant to Articles L 111-1, 112-1, and 713-2 of the French Intellectual Property Code [here, or here for the English translation], the court found that both Paisley Jane and its corresponding NFT infringed Hermès’ copyright in the “Kelly” and “Birkin” bags, and its trade mark in the signature lock closure designed for its bags.
| A fashionista Kat with a Birkin! Or an artwork?! |
Background
As the fashionista readers would be aware, Hermès is the producer of the iconic Kelly and Birkin bags, and the proprietor of a three-dimensional trade mark, registered internationally since 2003. Blao & Co, on the other hand, is a company that has been selling handbags under the brand name “NDG” since 2021.
After discovering that the defendant was marketing products similar to Hermès’ Kelly and Birkin models on its website, social media, and the NFT marketplace OpenSea, the claimants sent a formal notice in March 2022, requesting that it cease marketing those bags and the associated NFT. The claimants reiterated their request three more times in April 2022.
The defendant finally responded on 22 April 2022, stating that the bags were no longer on sale. However, further investigation revealed that the lookalike bags and the relevant NFT were still being marketed.
As a result, in July 2022, Hermès sued Blao & Co for copyright and trade mark infringement.
Court decision
The court assessed the copyright and trade mark infringement claims concerning both the physical handbags marketed by the defendant and the virtual NFT it sold on OpenSea.
Copyright infringement
The court confirmed that Hermès is the presumed copyright owner of the Kelly and Birkin bags under Article L 113-1 of the IP Code. Hermès provided sufficient evidence, including invoices and statements from its website, demonstrating that the products have been sold and promoted under the name Hermès.
The court then evaluated the originality of the Kelly and Birkin bags. It observed that the Kelly bag has “a trapezoidal shape with two sides having a gusset, a cut-out flap, a specific closing system, a special handle, four base studs and finally a removable shoulder strap”, while the Birkin bag has “a slightly rectangular overall shape, a flap with a three-notched cut-out, a specific closing system, two special handles, a specific gusset and four base studs”.
To meet the originality criterion, the creation of the bags must result from the free and creative choices of the author, rather than being dictated by technical constraints. According to the defendant, the Kelly would not be original because the “arbitrary” combinations of the said features were either common features found in handbags, or imposed by technical considerations. As for the Birkin, it would not be original because its overall visual impression closely resembled that of the allegedly unoriginal Kelly.
The court disagreed, holding that the various aesthetic choices of the authors, such as the selection of the particular shapes, ornaments, and lock mechanisms, gave both bags a unique appearance, demonstrating their author’s personal touch. The court emphasised that the defendant had failed to persuasively demonstrate that the creation of the bags was dictated by technical considerations, or that their features were commonplace for handbags. Ultimately, the court held that both the Kelly and Birkin bags are original works protected by copyright.
After confirming Hermès’ copyright in the Kelly and Birkin bags, the court assessed whether Blao & Co had reproduced a substantial part of these bags. The defendant argued that Paisley Jane had noteworthy differences from Hermès’ bags, particularly due to its use of cashmere Paisley fabric, which evoked the 1960s style, rather than reminding consumers of the Kelly or Birkin bags. The defendant further claimed that the key distinctive feature of its Paisley Jane model was its specific fabric and pattern.
However, the court underlined that copyright infringement is established by observing the similarities between the allegedly infringing work and the copyright material, rather than by focusing on the amount and significance of the dissimilarities between them. When considering the overall appearance of the bags, the rectangular shapes and the unique closure systems of the Kelly and Birkin were found to be reproduced in the Paisley Jane.
Accordingly, the court held that Paisley Jane reproduced, in whole, the original expressions of Hermès’ Kelly and Birkin bags. Moreover, the court did not limit this finding to the physical reproductions but expanded it to the virtual copies of the Kelly and Birkin, as represented by the NFT created and market by Blao & Co on OpenSea.
Trade mark infringement
The shape mark owned by Hermès covers the specific padlock closure found on its bags [here]. Although the claimants acknowledged that most competitors use a closure system and padlock on their bags, they emphasised that the similarity between their bags and those of other competitors is usually limited to the mere presence of a padlock system. In this case, however, they argued that the padlocks and the shape of the accompanying closure system of Blao & Co were highly similar, if not identical, to those of Hermès, creating a likelihood of confusion in the eyes of the public.
| Hermès’ registered shape mark |
In response, the defendant contended that, even if the shapes of the padlocks were identical, it would not cause a risk of confusion among the relevant public, as the padlock had the letters ‘NDG’, instead of Hermès’ ‘H’. According to the defendants, this was sufficient to distinguish their products and prevent the risk of confusion regarding the commercial origins of the relevant bags.
The court assessed the similarity between Blao & Co’s contested sign and Hermès’ registered trade mark and made the following observations:
- Both padlocks are attached to plates which have two straps on each side with stitching on their outer edges,
- Both signs include two plates, one on top of the other, with the lower plate having two visible nail heads and the upper plate having four, located on the corners of the plates,
- The upper plate in both signs is hexagonal, rather than rectangular,
- In both systems, the upper plates interlock with the lower ones through a perforated circular reel,
- Both systems have a padlock attached to the plates, and
- The only difference between the signs is the letter engraved on the padlocks (‘H’ on the claimants’ padlocks, and ‘NDG’ on the defendant’s).
| Paisley Jane’s padlock closure |
In light of this, the court held that merely using different letters on identical padlocks that are attached to identical, or at least highly similar, plates and straps could not prevent the likelihood of confusion among the relevant public, namely consumers of leather goods, fashion, or jewellery. Since the distinctive elements of Hermès’ shape mark are reproduced in Paisley Jane, consumers could mistakenly believe that it originates from Hermès. Accordingly, the court found that the defendant had infringed the claimants’ shape mark.
Without further elaboration, the court reached the same conclusion regarding Blao & Co’s the NFT on OpenSea.
Comment
While reading the first part of the decision – particularly the paragraphs in which the court confirmed the originality of Kelly and Birkin bags – this Kat wondered whether the court had fully considered the Court of Justice of the EU’s (CJEU) ruling in Cofemel [IPKat here]. Although in Cofemel the CJEU confirmed that copyright and design protection can be granted cumulatively to fashion designs, provided the subject matter at hand meets the originality threshold, it cautioned against making this a common practice (para 52). The CJEU stressed that the distinct purposes of design and copyright law should not be conflated, and that cumulative protection be granted only in “certain situations” (paras 50-52).
It is not as straightforward as the French court assumed that Hermès needs copyright incentives that respect its creative endeavours in producing a handbag to continue producing such so-called original designs. It might have sufficed to protect these designs for a limited time under design law, to “ensure a return on the investment necessary for the creation and production of [these bags], without thereby excessively restricting competition” (Cofemel para 50). Although this Kat loves Kelly and Birkin bags, she sees them as appealing designs, rather than works worthy of copyright protection.
Regarding the trade mark infringement claims, Hermès’ trade mark covers the shape of the padlock closure in general, not merely the letter H located on the padlock. The defendant might, therefore, have been more successful if it had challenged the validity of Hermès’ shape mark under Article 7(1)(e)(ii) or (iii) EU Trade Mark Regulation, arguing that the shape serves a technical function (i.e., securely closing and locking the bag) or that it adds substantial value to them.
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