Hermès is a luxury French design manufacturer renowned for its iconic high-end goods. Amongst their unforgettable designs are the ever so famous BIRKIN handbags, which has been an iconic product amongst the fashion world for many years. On 2 December 2021, a digital artist and entrepreneur, Mason Rothschild, marketed his NFTs, branded as ‘METABIRKINS’. It was announced by Hermès that Rothschild has made more that $1 Million in the course of his trade from the sale of his METABIRKINS.
In December 2021, Hermès sent a cease-and-desist letter to Rothschild. Following this, a complaint was filled by Hermès in January 2022. Subsequently, a trial took place on February 2023 where the jury were asked to consider the following claims:
- Infringement of the Hermès BIRKIN trademark;
- Trademark dilution and
- Cybersquatting.
In doing so the jury found that the entrepreneur infringed Hermès trademark rights by selling the replica purses as NFTs. The jury stated that Rothschild’s unauthorised creation of the replica BIRKIN bags featuring a fur outer layer were likely to confuse customers. Consequently, awarded $133,000 in damages to Hermès for the present trademark infringement, dilution, and the offence of cybersquatting (the unlawful action of registering a brand’s name that are identical or similar to their trademark).
Hermès argued that the artist simply attempted to create cheats of the iconic and famous Birkin trademarks by including the word “META”. However, Rothschild stated in his letter to the community subsequently after the case was filled, that he was not producing or selling fake Birkin Bags, he was simply producing artwork that was representing a fictional fur coated Birkin bags.
Additionally, it was announced that Rothschild plans to appeal to the decision. However, Hermès filed a motion on 3 March 2023 with the intention to stop Rothschild from trading his METABIRKINS NFTs and to transport the ownership to Hermès. Nevertheless, this proposed motion, if successful, won’t mean that the Hermès can delete the existing NFTs from the marketplace that has already been purchased.
Rothchild now has until 10 March 2023 to respond to the filed motion by Hermès.
If you would like to discuss protection of your brand, please get in touch with the Trademarkroom team today.
