Luxury bag counterfeiting: legal analysis of the Hermès v. Blao & Co. ruling.

On February 7, 2025, the Paris Judicial Court (3rd chamber, 2nd section, February 7, 2025, n°22/09210) rendered a significant decision concerning the protection of luxury accessories, in this case the famous Hermès Kelly and Birkin bags, based on both copyright and trademark law.

This analysis focuses on the major legal contributions of this decision regarding counterfeiting.

Qualification of original works.

The court confirmed the originality of the Kelly and Birkin bags by relying on the CJEU's Cofemel case law (September 12, 2019), which establishes that an object is original as soon as it \"_reflects the personality of its author, demonstrating the latter's free and creative choices_\".

The decision recognizes that the specific combination of formal characteristics (trapezoidal or rectangular silhouette, distinctive flaps) and functional elements (closure system with straps, plates, and a swivel clasp) constitutes a protectable creative expression, even for utilitarian objects such as handbags.

The court explicitly rejects the argument that these characteristics belong to the common domain of leather goods or are dictated by their technical function, in the absence of relevant prior art evidence. This position reinforces the protection of fashion creations beyond their simple aesthetic aspect.

Assessment of counterfeiting by similarities.

In accordance with consistent case law (Cass. Civ. 1, September 30, 2015 n°14-19.105), the court recalls that \"_the existence of counterfeiting is assessed by similarities with the original work, and not by differences_\".

This approach, particularly protective for rights holders, allows for the characterization of counterfeiting even when the counterfeiter has introduced superficial variations.

In this case, the court considers that dissimilarities concerning the choice of fabric (Paisley) and patterns are \"_irrelevant_\" for assessing counterfeiting. What matters is the reproduction of the essential characteristics that form the originality of the Kelly and Birkin bags.

This jurisprudential position reinforces the protection of fashion creations by allowing effective action against copies that maintain the silhouette and distinctive elements of a creation while modifying materials or textures.

Without questioning the validity of Hermès International's international three-dimensional trademark n°806207 (representing a clasp system with a padlock), the court implicitly confirms that a distinctive closure system can constitute a valid trademark for leather goods.

Assessment of likelihood of confusion.

The court conducted a detailed comparative analysis between the three-dimensional trademark and the sign affixed to the disputed products. It identified several decisive visual similarities: the six-sided plates, the circular swivel clasp, the straps with topstitching, and especially the padlock.

The decision considers that the padlock constitutes a \"_particularly distinctive_\" element allowing the public to associate the sign with the Hermès brand. This approach confirms that, in assessing the likelihood of confusion, certain elements can carry predominant weight due to their enhanced distinctive character.

Even the presence of the letters \"_NDG_\" on the padlock (instead of Hermès' \"H\") was not sufficient to rule out the likelihood of confusion, the court preferring a global assessment of the similarity of the signs and holding that there was \"_a likelihood of confusion by association with the trademark_\".

Cumulation of protections and legal strategy.

This case perfectly illustrates the interest of cumulating copyright and trademark protections in the luxury sector. This \"_two-pronged_\" strategy allows for the protection of both:

- The overall form and aesthetic characteristics of the bags (copyright) - Specific distinctive elements such as the closure system (trademark law).

This complementarity offers reinforced protection against various forms of infringement and ensures the longevity of protection (indefinitely renewable trademark rights) beyond the eventual expiry of copyright.

The judgment also illustrates the importance of properly structuring the allocation of rights within a group: Hermès Sellier is the copyright holder and trademark licensee, while Hermès International is the trademark holder, thus allowing each entity to act on its own legal basis.

Finally, the court precisely distinguishes the respective damages of Hermès Sellier (180,000 euros for copyright and trademark infringement) and Hermès International (40,000 euros for trademark infringement only), in accordance with the principle of individualization of damages provided for by articles L331-1-3 and L716-4-10 of the Intellectual Property Code.

Conclusion.

The Hermès v. Blao & Co decision confirms the robustness of the French intellectual property protection system in the luxury sector. It demonstrates the effectiveness of cumulating copyright and trademark protections, while providing useful clarifications on the assessment of the originality of fashion accessories and the evaluation of damages.

For creators and businesses in the sector, this decision serves as a reminder of the importance of a comprehensive intellectual property protection strategy. For competitors, it highlights the legal and financial risks associated with too direct an inspiration from the iconic creations of major luxury houses, even when superficial modifications are made to materials or patterns.