French Fashion House Hermes Files Suit Against Online Retailer Alleging Trademark Infringement

The fashion industry’s battle against fake designer handbags wages on. In a five-count complaint filed January 28, 2011 in the US District Court for the Southern District of New York, French high fashion house Hermès International alleges that online retailer Thursday Friday is selling cotton tote bags featuring color photographs of its trademarked, iconic Birkin Bag. Hermès brings claims of false designation of origin, trademark infringement, and dilution under the Lanham Act, various claims under New York state law, and seeks preliminary and permanent injunctive relief.

Hermès is world renowned for its high quality, luxury goods and services in the fields of leather goods, apparel, fragrances, fashion accessories and home furnishings. Its famous, handcrafted Birkin Bag is recognized worldwide because of its unique design and distinctive features. Prices start at $6,000, but demand is high despite the cost. From 2002 to 2008, Hermès sold more than 30,000 Birkin Bags in the United States, representing total revenue exceeding $200 million.

The Birkin Bag does not display any visible word trademark on its exterior or on any hangtags. Hermès contends, however, that the design of the bag has obtained secondary meaning and become a famous trademark, because of its numerous portrayals in the media and marketplace, including magazines, television shows, and books. The widely recognized and distinctive closure of the bag, which consists of two thin leather straps that fit into a turn lock, is also the subject of an incontestable trademark registration.

Internet retailer Thursday Friday sells the Together Bag, a canvas tote displaying full color photographs of what appear to be a genuine Birkin Bag on five surfaces – front, back, two sides, and bottom. The Together Bag sells for $35 and is available in three colors. According to the complaint, Thursday Friday “is simply riding on the reputation and recognition of the Birkin Bag to sell its otherwise generic tote bag.”

Unlike most knock-off manufacturers who seek to pass off their own items as that of a better known competitor, Thursday Friday makes no attempt to pass off the Together Bag as a genuine luxury product. And given that the products are dissimilar in style, price, and materials, purchasers of Together Bags are not deceived into thinking they are getting genuine Birkin Bags. The issue here is instead whether consumers would be confused as to Hermès sponsorship or approval of the Together Bag or misled into thinking that Hermès has, in the words of the complaint, “given in to the temptation to license its famous trademark for mass market goods.”

Whether Thursday Friday is indeed attempting to confuse consumers as to the source of the Together Bag or an affiliation with Hermès is unclear. The Internet retailer promotes itself as “into accessible high style” on its website, suggesting its goal is to make luxury goods affordable and implying it is positively affiliated with Hermès. But Thursday Friday also proclaims that its Together Bag “references luxury but ultimately works as an anti-status status symbol,” a statement that derides the exclusive nature of the Birkin Bag and thus suggests there is no affiliation between the two companies.

The complaint apparently has not yet achieved its intended effect. As of February 11, 2011, the allegedly infringing “generic tote bag” is still available on Thursday Friday’s website. Thursday Friday’s answer is due February 24, 2011.

Arent Fox is monitoring this case and other trademark infringement cases involving fashion trademark law. Please contact Leah Montesano with questions.