Decision Pending for the Infringement Lawsuit between Hermes and Banana International Inc.
2011/04/10 Taiwan
The image on the left shows the mark used previously by the Defendant; the image on the right is the mark that is currently being used by the Defendant.
(Source: http://udn.com)(2011-04-09)
An official from Taiwan Intellectual Property Office (TIPO) commented that the examination on the application filed by Banana International Inc. to register the mark in dispute (see below) has been temporarily withheld, pending the Court’s Decision on the infringement lawsuit between Hermes and Banana International Inc. (the Defendant). The Court’s Decision will be the basis on deciding whether or not the application filed by the Defendant will be approved for registration.
Hermes mentioned that in order to fight counterfeit, it has been using the look of the Birkin bag as its 3D trademark. Since the handbags traded by the Defendant are designed in a way that mimics the look of a Birkin bag, Hermes believes that such an unauthorized use of its 3D trademark by the Defendant has constituted infringement. However, the Director General of the TIPO, Mei-hua, Wang, commented that Hermes has never filed an application to register the look of its Birkin bag; consequently, Hermes might not have sufficient ground to sue the Defendant for infringement.
Regardless, the Defendant’s mark is, indeed, confusingly similar to Hermes’ in terms of the arrangement of the elements of the mark. Hermes’ trademark, which is a combination of a device and English words, depicts a carriage pulled by a horse, a stableman standing in front of the horse, and the English words of “HERMES” and “PARIS” placed below the aforementioned device. The Defendant’s mark, which is also composed of a device and English words, depicts a banana being placed on top of a carriage, which is pulled by a rabbit. The English words of “BANANE” and “TAIPEI” are placed below the aforementioned device.
The Director General of the TIPO commented that since Hermes has registered its aforementioned mark in Taiwan, there is a possibility that the Defendant’s mark might infringe Hermes’ trademark right. Even though the elements as shown in the Defendant’s mark are entirely different from those of Hermes’, the Defendant’s mark, when viewed as a whole, is confusingly similar to Hermes’. It, therefore, would depend on the Court’s Decision on whether the Defendant’s mark is likely to cause confusion to the general consumers or the said mark is just a humorous twist of Hermes’ mark.
The Defendant argued that its mark is entirely different from Hermes’. Hermes, on the other hand, stated that the previous mark used by the Defendant also included a carriage and a stableman. It was only till recently did the Defendant change its mark to the banana and rabbit device. Such a change, in Hermes’ opinion, is the Defendant’s attempt to avoid facing any legal liability for infringing on Hermes’ trademark right. Hermes has obtained a copy of the Defendant’s previous marks as evidence to support the case.
Hermes asks the consumers to respect its trademark right and refrain from buying the handbags sold by the Defendant.
The Defendant’s pending mark.
Application No. 100006425
Organized and translated by Jenny Yu
International Affairs
