“Waiting For My Birkin”: Witty Slogan Or Trademark Infringement?

Hermès has stamped down on “humorous” takes on its famous Birkin and Kelly handbags, reminding potential copycats that wit and parody are not a license for trademark infringement, as Niké Mion explains. 

A Hermès bag, especially the Birkin or the Kelly, is not for everyone. Not only does it require a considerable investment, but you must also be patient. With long waiting lists, there is no guarantee you will be able to purchase your desired bag. 

Retailer Sherine Orient thought she could capitalise on this demand by bringing bags to market resembling those of Hermès but with the slogans: "En attendant mon Birkin" ("Waiting for my Birkin") and "Mon Hermès est à la maison" ("My Hermès is at home"). 

Although the texts were intended to be humorous, Hermès did not find them funny. When the luxury bag manufacturer objected, Sherine Orient refused to stop. This "joke" eventually cost her dearly.   

Why Hermès went to court 

Hermès summoned Sherine Orient to appear before the Court of Nanterre, demanding a stop to the sale of the disputed bags and the destruction of the bags still in stock. It also claimed damages for the commercial and reputational impact of the alleged infringement of its copyright and trademark rights. 

Hermès based the proceedings on its copyright on the bags, its three-dimensional (3D) trademark for the lock of the Birkin bag and its word marks HERMÈS and BIRKIN. 

Under trademark law, the holder of a trademark registration can object to the later use of an identical or similar sign for identical or similar products and/or services, if this is likely to cause confusion among the public.  

Why the word marks were initially not affected 

In the first instance, the court upheld the claims based on copyright and a 3D trademark. However, the claim based on the word marks was rejected by the court.  

The court found there to be no trademark infringement because the Hermès trademarks were part of complete sentences in the slogans used by Sherine Orient. Those complete sentences had to be included in their entirety in the comparison of the signs. In addition, the court addressed the humorous nature of the phrases, finding it unlikely that consumers would believe that the bags in question could be from Hermès. According to the court, the signs used by Sherine Orient were not considered identical and the use of the sentences would not lead to a likelihood of confusion. 

Hermès appealed the slogan ruling 

Hermès appealed, arguing that the words 'Hermès' and 'Birkin' were capitalised in the slogans used by Sherine Orient. According to Hermès, this was an express reference to the registered trademarks. The use in the sentences "En attendant mon Birkin" ("Awaiting my Birkin") and "Mon Hermès est à la maison" ("My Hermès is at home") did not alter this, as these are simply direct references to the registered Hermès trademarks and bags. The trademarks were thus used identically for identical goods, which constituted an infringement of trademark rights. 

Hermès argued that infringers would be able to easily circumvent trademark infringement by adding extra words, which would impair the effectiveness of trademark law. 

The verdict: Humour does not exclude trademark infringement 

In its ruling, the Court of Appeal of Versailles noted that the BIRKIN and HERMÈS trademarks are well known to the public.  

The texts on the bags are perceived by the consumer as a direct reference to the genuine BIRKIN and HERMÈS bags (comparing the parody bag with the original Hermès bag that they do not yet own or that have remained at home). This creates a direct link between the protected trademarks and the bags sold. Those bags are identical to the products for which the trademarks are registered. The use of the brands is also intended to promote the sale of these bags.  

Although the humorous tone of the sentences leaves little doubt that the bags do not actually come from Hermès itself, those acts affect the interests of the trademark owner. The slogans are aimed at profiting from the reputation of the brands, piggybacking on the investments made and damaging the image of Hermès.  

The Court of Appeal ruled that the use of the word marks HERMÈS and BIRKIN in humorous texts on bags constituted a trademark infringement. The earlier judgment of the court was thus overturned. 

What does the ruling mean for trademark owners and entrepreneurs?  

A trademark mainly has an origin and distinguishing function. However, this judgement shows that a trademark also fulfils an advertising and investment function. A trademark owner has made the necessary (financial) efforts to build goodwill and reputation. Even if it is obvious that the disputed products do not originate from the trademark owner, third parties should not be able to abuse or damage the reputation of that well-known trademark. 

The ruling also provides an important reminder for those who think they can use third-party brand names as long as they are packaged in slogans, with or without a witty message. Although such use will depend on the circumstances of the case, it is wise to seek advice from a specialist in advance if you are considering using someone else's registered trademark.