Clifford Chance

Florence Intellectual Property Court and the Court of Appeal

In decision n. 3442/16 the Florence Intellectual Property Court and Court of Appeal ruled against Hermès and denied protection for the shapes of the Hermès Birkin and Kelly handbags. The Florence Intellectual Property Court ruled that:

• the Hermès Kelly and Birkin bags lacked "original distinctive character". The judges noted that the shapes of the Hermès Kelly and Birkin bags, "on the whole, reproduce the canonical parameters of typical bags that are available on the market"
• the "acquired distinctiveness" in the Hermès Kelly and Birkin bags has not been proven. Hermès provided certain evidence to the Court, including advertising materials, magazine articles, and references to Hermès Kelly and Birkin bags in popular media, film and television. The Court ruled that that this evidence did not demonstrate that the consumers linked the shape of Hermès Kelly and Birkin bags to Hermès.

This first instance decision was then confirmed by the Court of Appeal in and decision n. 540/18.

However, in the time between decision n. 3442/16 and decision n. 540/18, the Court of Florence acknowledged the validity of the Hermès Kelly and Birkin handbag trademarks and did consider them to be distinctive.

The Italian Supreme Court

The Italian Supreme Court disagreed with the decision of the Florence Intellectual Property Court and the Court of Appeal, and annulled the decision of the lower courts on the following grounds:

Burden of proof

The Supreme Court judges disagreed with the reasoning of the Court of Appeal which maintained that it was up to Hermès to prove the acquired distinctiveness of its trademarks. The Supreme Court, instead, argued that registered trademarks have a presumption of distinctiveness, hence it is up to whoever claims their nullity (i.e., in this case Buti,) to demonstrate that they do not meet the distinctive requirements.

Absence of distinctive character

The lower courts stated that there was absence of distinctive character in Hermès Kelly and Birkin bags and described the shape of the handbags as "standardised". The Italian Supreme Court disagreed with this on two points: the judges "should have ascertained the existence of the specific and autonomous hypothesis of the non-registrability of the shape trademarks envisaged by the law".

The Italian Supreme Court also examined the value of evidence from members of the public when assessing distinctive character. The judge stated, "the data resulting from public opinion polls are clues, not in themselves conclusive, which must be examined in relation to the overall degree of technical-scientific reliability of the same, and must be accompanied by other significant, precise and concordant indications", suggesting that the Courts will not view consumer survey results as a fait accompli in such scenarios.

Comment 

The Hermès Birkin and Kelly bags are renowned worldwide for their excellent craftsmanship, exclusivity, and timeless design. These factors contribute to the popularity of the bags and have made them the target of imitation by rival brands seeking to take advantage of the brand's success. In January 2022, Hermès successfully pursued legal action against NFT creator Mason Rothschild for trademark infringement and dilution of the Birkin name through the marketing of a line of digital assets called "Metabirkins," which were digital copies of the Birkin bag, which we have previously examined in our article: "Metaverse: What are the Legal Implications".

The Hermès/Buti case will now go back to the Court of Appeal for another assessment of the merits. This assessment shall be conducted having in mind the following principles laid down in the supreme court decision:

• the registration of a trademark determines a rebuttable presumption that the trademark is valid;
• the party invoking the registered trademark's nullity has the duty to prove the lack of distinctive character;
• 3D trademarks (and, more generally, trademarks the core of which is the shape of a product) have distinctive character only if the shape of the trademark diverges significantly from the usual/standard shape of that product;
• contrary to what the lower courts argued, the trademark owner is not bound to provide evidence of the distinctive character by relying exclusively on evidence that demonstrates that third parties (the public of the consumers) associate that shape with that brand (e.g., by submitting a consumer survey in court);
• instead, the trademark owner may provide broader evidence, e.g., of the investments it made in order to reinforce the link between the shape and the brand and confer a secondary meaning to those trademarks which do not have it at the outset.

Although the decision of the Court of Appeal is yet to be seen, the Italian Supreme Court's ruling is another demonstration that 3D trademark registration is an attractive tool for enforcement and is a victory for luxury brands that primarily rely on trademark protection for the shape of their products to prevent third parties from producing and distributing copies.

For further analysis on pressing legal issues in the fashion industry today, read our previous Talking Tech articles:

• Stripe Wars: Inside the Thom Browne vs Adidas Trademark Case
• Virtual Fashion Week – Key IP Considerations
• The CMA Greenwashing Review – Is this the year of reckoning for the fashion sector?
• Co-Branding Partnerships In The Physical And Digital Worlds – A Masterclass From Balenciaga And Fortnite, "Protecting IP rights in the virtual world"
• Luxury shoe brand Manolo Blahnik steps into the Chinese market after a favourable trademark decision