The well-known French luxury goods brand “Hermes” recently filed a lawsuit at Taiwan Intellectual Property Rights Court (“the IP Court”) against a Taiwanese handbag manufacturer, Banana International, for infringing its trademark rights.

Hermes argued that Banana International printed the classic appearance of Hermes Birkin bags on Banana’s canvas bags, which infringed Hermes’ trademark rights. However, Banana International denied such accusation and insisted that the figure printed on its canvas bag products was not Birkin bags’ image but only a simple, regular and commonly-seen tote bag. Since Banana International did not manufacture leather bags that look like Birkin bags but only canvas bags with printed tote bag figure, Banana International did not admit that such act constitutes a trademark infringement. In particular, Banana’s bags cost only about USD30-50 each. Under such circumstances, Banana International argued that relevant consumers are not likely to confuse or misidentify the origins of Banana’s bags and Hermes Birkin bags because the difference between the prices of the two parties’ bags is enormous.

Although Banana International emphasized that it has designed a special trademark featuring a rabbit and a banana cargo to symbolize the spirit of Taiwan, indicating the origin of its products and distinguishing them from Hermes’, Hermes’ Taiwan branch has clarified that Hermes lodged such lawsuit not merely because Banana International imprinted the shape of Hermes Birkin bags on its own canvas bags, but mainly because that Banana International initially plagiarized Hermes’ cargo trademark and then changed its trademark to a rabbit pulling a banana cargo after Hermes took legal actions thereto.

According to the Trademark Act, those who are convicted of trademark infringement should pay damages amounting to 500 to 1,500 times the retail price of the counterfeit product. As a large number of Banana International’s canvas bags have been sold, if the IP Court decides that Banana International’s behavior constitutes trademark infringement, the Taiwanese manufacturer may have to pay extremely high compensation.

The Chief of the Taiwan Intellectual Property Office (TIPO), Ms. Wang, stated that if the overall design of Banana International’s trademark is likely to confuse or misidentify consumers about the origins of goods when compared with Hermes’, Banana International’s behavior will probably be deemed as violating Hermes’ trademark rights. As to the appearance of Banana International’s canvas bags, since Hermes did not register the design of Hermes Birkin bags at the TIPO, the possibility that the IP Court determines Banana International plagiarized the appearance of Birkin bags is not high.