Hermès’ lawsuit for trade mark infringement dismissed - Adidas opposes trade mark application by LIV Golf

Hermès unable to prevent Namilia from using Birkin Trade Mark

Hermès has suffered a setback in its attempt to prevent others from using its iconic Birkin handbag and the "BIRKIN" brand in fashion shows, as shown in the last decision handed down by a German court in a case opposing Hermès and Namilia, a fashion label based in Berlin.

The legal dispute between Hermès and Namilia began with the launch of Namilia's S/S 2024 collection in July, in which designers Nan Li and Emilia Pfohl presented a line of clothing and handbags that incorporated distinctive elements of the Hermès brand, such as the name “Birkin”, the configuration of a handbag with rectangular sides, a rectangular bottom, and a dimpled triangular profile. The controversy escalated when Namilia, known for tackling political and social issues in its work, used the 'BIRKIN' word mark in its Instagram posts related to the collection. In response, Hermès sent Namilia a cease-and-desist letter over the summer and then filed a lawsuit.

On 19 September, the District Court of Frankfurt rejected Hermès’ request that Namilia’s activities be stopped, stating that there were insufficient grounds for such an injunction with respect to Namilia’s use of the Birkin bag design and the related trade mark. As a result, Namilia will be allowed to continue sharing images of its S/S 2024 fashion show online, particularly on the Instagram platform, arguing that the use of these trade marks is part of artistic expression.

This court decision raises an interesting balance between Hermès’ property rights and Namilia’s artistic freedom. The court held that the use of the brand for artistic purposes is legitimate as long as it is in line with honest practices within the industry. It also highlighted the importance of balancing these rights, concluding that Namilia’s artistic expression through its fashion show outweighed Hermès’ property rights in the Birkin brand.

The court also co’sidered whether Namilia was taking unfair advantage of the distinctive character of Hermès’ Birkin brand, taking into account various factors such as the recognition of the brand, the similarity of the conflicting signs and the nature of the products in question. In the end, it concluded that Namilia’s designs were works of art protected by law and that their artistic presentation did not denigrate the Hermès brand, but rather used it as a symbol of luxury and status.

In regards to the use of the ‘BIRKIN’ trade mark in Namilia’s Instagram posts, the court considered that this was supported by artistic freedom, as the images were used descriptively in the context of an artistic exhibition.

In essence, this legal decision highlights the need to balance property rights and artistic freedom in the fashion industry, and the limits of trade mark protection when it comes to preventing use of protected trade marks in artistic works. Although Hermès still has legal options and retains protection if Namilia decides to commercialise items based on Birkin designs, that could lead to a case similar to Hermès vs Metabirkin, which we reported on several times in recent months (see here, here, here and here).

Adidas Takes Action Against LIV Golf alleging its trade mark should not be registered

Sports multinational Adidas has filed in the US a motion opposing a trade mark application by LIV Golf League, a professional golf league based in Saudi Arabia and run by former professional golfer Greg Norman. The dispute is over the league's logo and the iconic Adidas "three stripes".

Adidas, known for its three stripes brand since its founding in 1949, claims that the letter 'L' in the LIV Golf League's logo bears a striking resemblance to its iconic stripes. While LIV Golf claims that its logo represents the Roman numerals for 54, the score a player would receive if he or she birdied every hole on a par 72 course and the number of holes played in LIV events.

For its part, the LIV Golf League filed five trade mark applications. However, in response, Adidas took legal action to block them and filed a notice of opposition with the US Patent and Trademark Office (USPTO), claiming that the LIV Golf logo is confusingly similar to its trade mark in "appearance and overall commercial impression". It is to be noted that LIV Golf has already registered its brand and logo in countries such as the UK, Japan, China and Mexico and filed a trade mark application with the EUIPO.

Neither side has yet commented on the situation. What is clear is that this is not the first legal dispute involving logos similar to Adidas. In January, for instance, Adidas lost a case against designer Thom Browne for using four parallel stripe designs on clothing and footwear. In March, in a similar case, Adidas requested the USPTO to reject Black Lives Matter's application for a logo featuring three parallel yellow stripes.  We have discussed both cases in previous blogs,  see Adidas vs Thom Browne and  Adidas vs Black Lives Mater.