Hermes should not prove the distinctiveness of its registered shape marks over ‘Birkin’ and ‘Kelly’ model bags

Vincenzo Iaia

Italian Supreme Court, judgement of September 22nd, 2022


After more than ten years of litigation, the Italian Supreme Court settled the trademark battle between Hermès International s.c.p.a. & Co. (‘Hermès’) and Buti di Buti Amerigo & C s.a.s. & Co. (‘Buti’). In 2009, Hermès filed a lawsuit against Buti for infringement of the Italian and European shape marks of the bags ‘Birkin’ and ‘Kelly’. In the alternative, the plaintiff claimed violation of the Italian unfair competition law (Art. 2598, no. 1, Italian Civil Code) for slavish imitation of the aforementioned bag models.


The Florence Courts of first and second instances not only dismissed the claims by Hermès but also accepted the counterclaim for annulment of its two shape marks based on the lack of distinctive capacity. The Courts grounded their decisions on the fact that Hermès did not provide sufficient evidence of acquired distinctiveness of its bags’ shapes, considering them aligned to market standards.


Hermès filed an appeal before the Italian Supreme Court invoking inter alia infringement of Art. 121 of the Italian Intellectual Property Code and Art. 99 of EU regulation 1001/2017 since the lower Courts placed the burden of proving the distinctiveness of the registered (shape) marks on Hermès. According to the French fashion house, it is for the person challenging the trademark to demonstrate the lack of its distinctive capacity, in line with the adage onus probandi incumbit ei qui dicit. Moreover, the plaintiff argued that the Florentine Courts did not take account of the substantial documentation highlighting the renown of the marks thanks to various advertising campaigns which led them to acquire a secondary meaning.


The Italian Supreme Court upheld the appeal brought by Hermès on the grounds that registered trademarks enjoy a rebuttable presumption of distinctiveness (this principle has already been affirmed by the Italian Supreme Court, judgement 4771/2018). Indeed, such trademarks have already passed this test during registration before the competent intellectual property office. As such, Buti should have provided evidence to the contrary, but did not. The cancellation of the marks with no evidence from the applicant implies that both Florentine Courts reversed the burden of proof without justified reason.


Furthermore, the Italian Supreme Court accepted the second ground of appeal since the lower Courts failed to explain why the shapes characterizing the models of the bags were devoid of distinctiveness. The Courts reached this conclusion apodictically by affirming that the bag models “Birkin” and “Kelly” respect the typical parameters of bags generally available on the market.


The Italian Supreme Court further specified that the assessment of secondary meaning can be made through opinion polls acquired ex officio by the judge through a technical consultancy. However, they are not binding, leaving the judge to evaluate other elements, like the unconventional character of the trademark and its ability to be associated with a certain undertaking.


In conclusion, this decision relieves trademark holders of the burden to prove the distinctive capacity of the signs used to identify their goods and services in the market whenever a person challenges their title. It is a reassuring outcome insomuch as it grants legal certainty about the validity of trademarks. On the same axiological line stands the disapproval towards a superficial approach to the documentary evidence of acquired distinctive capacity.

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