Hermès bags Birkin TM win in Japan

French luxury brand Hermès has won a case in Japan against a local manufacturer of imitation Birkin bags.

Osaka-based law firm Marks IP reported last month that the IP High Court had upheld a judgment requiring Kabushiki Kaisha Tia Maria to pay Hermès JPY2,900,000 ($27,973) in damages for the infringement.

Hermès owns a Japanese 3D shape trademark for the Birkin bag, registered in 2011, according to Marks.

The French brand sued Tia Maria for infringing the mark through lookalike bags which sold for JPY27,300.

In June last year, the Tokyo District Court ruled in Hermès’ favour, ruling that the mark had acquired distinctiveness and become famous enough to warrant a finding of infringement.

The decision has now been upheld on appeal, with The Fashion Law reporting that the court considered the resale market for Birkin bags to be a key factor in the case.

Used Hermès products such as Birkin bags can fetch high prices on the resale market, rather than depreciating in value over time.

The court said that a likelihood of confusion analysis must take stock of “the actual conditions of trade”, including the fact that a “second-hand market has been established for used [Hermès] products,” which are “actively traded in [non-Hermès] stores and on the internet”, The Fashion Law reported.

“Given that used products of [Hermès] are actively traded in the market, the possibility of confusion between [its] products and [Tia Maria’s] products, etc, is recognised to exist concretely,” the court added.

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