France: Jane Birkin defends her trademark against Hermès

ContratsRecently alerted by the cruel practices endured by crocodiles during their slaughter for the production of the famous Birkin bags from the Hermès fashion house, the singer Jane Birkin informed Hermès about her intention to rename the crocodile-skin handbag bearing her name. The singer no longer wishes her name to be associated with such practices.

The Birkin bag, created in the early 1980s following a meeting between the singer and Jean-Louis Dumas, the chief executive of Hermès at that time is, however, one of the leading bags from the Hermès fashion house since its inception date.

Alongside arousing the curiosity of fans of the luxury brand Hermès, this news has also piqued the interest of lawyers. Indeed, in the face of such news, the question that arises is whether Jane Birkin can legally rename the crocodile-skin bag.

The fact of renaming a designer bag bearing the name of a star is not an isolated practice since there is a myriad of bags bearing the name of their muse. To cite only the most famous, it is noteworthy to mention the following designer handbags namely: So Kelly from Hermès as a tribute to Grace Kelly, Jackie from Gucci, Lady Dior, or B. Bardot from Lancel.

Since these names are associated with handbags, i.e. with goods, they were obviously registered as trademarks. This is the case, for example, for the name Birkin, filed and registered both as a French and international trademark by HERMES INTERNATIONAL since 1997 and the “So Kelly”, filed in 2009. The same holds true for the “Jackie” handbag, which refers to Jackie Kennedy and was filed by the Italian company GUCCIO GUCCI in 2008.

The practice of registering a surname as a trademark has been upheld by legislation and the French courts for a long time.

The surname is a personality right which is inalienable and indefeasible. Yet Article L.711-1, paragraph 2 a) of the French Intellectual Property Code provides that surnames can be registered as a trademark. Moreover, since the 1985 case of Bordas (Cass. Com. March 12, 1985, No. 84-17163), it is settled law that there can be an agreement to the effect of the commercial use of a surname.

Subsequently, the cour de cassation specified the conditions under which a surname could be registered as a trademark. In a judgment datedMay 6, 2003 (Cass. Com. No. 00-18192) the cour de cassation held that a founding partner who has agreed to the inclusion of his name in the company name must also expressly waive his ownership rights and allow the company to register the said surname as a trademark. In other words, the use of the surname of a third party is limited to what has been expressly authorized by the name holder.

Thereafter, the cour de cassation intervened in the Inès de la Fressange case regarding the use of her surname as a trademark by the fashion company bearing her name. After being dismissed from the company, the fashion designer had sought to recover the rights affiliated with her name by invoking the potentially misleading nature of the trademark on the basis of Article L. 714-6 b) of the Intellectual Property Code. She claimed that consumers would be misled into believing that they were buying clothes designed by her. But this was not the stance taken by the cour de cassation which, on the basis of Article 1628 of the Civil Code and the implied warranty against eviction principle, dismissed the designer’s claim (Cass. Com. January 31, 2006, N ° 05-10116).

A few months later, the Court of Justice of the European Union also faced a similar question in the Elizabeth Emanuel case (ECJ March 30, 2006. Aff . C-259 /04. Elizabeth Florence Emanuel v Continental Shelf). The issue in that case concerned the sale by the designer Elizabeth Emanuelof her fashion company bearing her name and the assets attached thereto, including the ELIZABETH EMANUEL trademark. However, following the sale, the fashion designer filed a claim for the revocation of rights against the trademark which was transferred accordingly, deeming that, just as was the case with Madame de la Fressange, the public was confused since she was no longer the designer of the clothes marketed under the trademark.

The Court held that the ELIZABETH EMANUEL trademark was not, in itself, likely to mislead the public as to the origin of the clothes. But the Court opined that it is for the national court to verify whether there is, on behalf of the company holding the trademark, an intention to make the consumer believe that the designer is still involved in the design of clothes. This would thus be tantamount to fraudulent tactics likely to make the company liable.

In the present case, since Jane Birkin is not associated with the design of the handbag, she cannot rely on this approach for the crocodile-skin handbag to be renamed.

It therefore remains to be seen whether the intention to rename the Birkin crocodile-skin handbag can materialize to the extent that the surname of the singer, registered as a trademark, could be considered as part of the assets of the Hermès company. The outcome of this case shall enlighten us.

Furthermore, on 11 September last, the saddler welcomed in a press release that Jane Birkin seemed to be satisfied by the measures adopted by the Hermès house following the controversy appeared this summer.