Most women know what the Hermès “Birkin” bag means. It is an instantly recognizable bag, extensively covered in media and television, including HBO’s Sex and the City. Hermès has carefully crafted the Birkin bag’s image over the years to symbolize style and wealth, or rather to imbue the owner of a Birkin bag as someone with style and wealth. This is not unjustifiably so since a brand-new Birkin bag is generally priced at $8,000. Some models are so highly priced that there is a waiting list, and some have sold at auctions up to roughly $200,000. For those with a particularly acute predilection for expensive bags, Hermès recently unveiled four diamond-studded handbags designed by Pierre Hardy, each worth around $1.9 million.
Given the bag’s high end and glamorous image, it has resulted in a number of imitators and obvious (and not so obvious) counterfeits. Hermès recently filed suit in the Central District of California against Emperia, Inc., Anne-Sophie, Inc. and Top’s Handbags, Inc. for trademark infringement for selling infringing knockoffs of the iconic bag (see pic left). The infringing handbags apparently sell at wholesale prices of between $15-20. According to the complaint, Hermès argues that Defendants have taken advantage of the Birkin Bag’s fame and have tarnished Hermès’ reputation for quality and commercial integrity by leading consumers to believe Hermès licensed the bag’s design to Defendants.
Hermès’ lawsuit is based on the Birkin Bag’s trade dress, which is defined by ““(a) a distinctive three lobed flap design with keyhole shaped notches to fit around the base of the handle, (b) a dimpled triangular profile, (c) a closure which consists of two thin, horizontal straps designed to fit over the flap, with metal plates at their end that fit over a circular turn lock, (d) a padlock which fits through the center eye of the turn lock and (e), typically, a key fob affixed to a leather strap, one end of which is affixed to the bag by wrapping around the base of one end of the handle.” In fact, the padlock and leather strap are also subject to another trademark registration, which is defined by “rectangular straps which fit over the flap of the handbag, and whose ends are joined with rectangular hardware which includes a turn-lock and a padlock. “ Both trade dress registrations are available here and here.
The suit seeks unspecified damages and requests that actual damages be trebled, pursuant to 15 USC 1117. Brands like Hermès recognize that the purchaser of a counterfeit product (such as the $15 knockoff) would (highly) likely not spend the money on the real thing. However, luxury brands have an interest in maintaining a strong IP portfolio and knockoffs such as those are a real threat to that portfolio. If counterfeiters have unimpeded access to consumers by selling counterfeit products, they will eventually tarnish the brand to such an extent that consumers will have lost confidence in the brand. Furthermore, a failure to police a brand can eventually result in trademark abandonment. In other words, that Birkin bag would no longer be that Birkin bag if Hermès did not go about doing what it does – sue imitators. For anyone wondering whether these lawsuits are worth it, let’s put it another way: according to the World Customs Organization, counterfeits have cost nearly 400,000 jobs in the fashion industry and at least 5 billion pounds in revenue over the last 20 years. Those are some formidable numbers.