Crocodile tears: It's Birkin versus Birkin

It would appear that the actress Jane Birkin first met Hermès chief executive Jean-Louis Demas on a plane and, following their brief encounter, Hermès bags named after the actress have attracted long queues of Chinese buyers often trading slots for new bags. In essence there exists a futures market in the Birkin handbag sector.

Now, in consequence of People for the Ethical Treatment of Animals' (PETA) ) campaign against Hermès use of crocodile skin in those hand bags, Jane Birkin wants to distance herself from the very bags which carry her name.

Normally, the sort of rights a celebrity can rely on to protect their names are:

• registered trade mark infringement;

• passing off;

• defamation;

• trade libel; and,

• more recently, were Birkin promoted in Guernsey, for example, registered image right infringement.

History has shown us that, following the recent case of Rihanna (Robyn Rihanna Fenty v Arcadia Group Brands Limited), absent any agreement between endorser and endorsee, a celebrity can prevent the unauthorised use of their name and image on fashion products by suing in passing off.

Here, however, time alone suggests that Jane Birkin may have consented or acquiesced to the use of her name by Hermès on crocodile hand bags. Hermès have been the owner of a registered trade mark for Birkin's name since 1997.

Curiously, Hermès have sold crocodile bags since the late 1980s under her name - some 30 years - so her sudden discovery of the issues raised by PETA might need to be assessed against that backdrop. That is not to say that undisclosed practices of a party to a contract cannot give the other the right to terminate that agreement when they come to learn of those practices, but a well-drafted endorsement agreement normally precludes the endorser from denigrating the reputation of the endorsee. Isn't that what Jane Birkin might be said to have done by seeking to withdraw her name from those crocodile bags?

Politically, though, it is questionable whether it would be wise for Hermès to rely on such a clause if it existed in their agreement - suing a celebrity for standing up for crocodiles is not an attractive proposition.

Perhaps, in this case, we are not dealing with an agreement as such, but an outright transfer of the Birkin name as a trade mark to Hermès. Something similar happened to Elizabeth Emmanuel, who is best known for designing Princess Diana's dresses.

When Emmanuel divorced her designer husband, she continued to sell clothing under her own name, which she transferred to her company, Elizabeth Emanuel Plc. An associated company of hers then sold the trade mark down a chain of other third-party companies after she had resigned as employee. When she later decided to reclaim her name through the UK Trade Mark Office, which had registered her name for that third party, she lost. On appeal to the specialist appointed person she again failed. She then maintained her appeal to the European Court of Justice, claiming any dresses sold under her name but not designed by her would deceive the public. The court disagreed.

This dispute reflects just another battle in the long-running saga between individual designers and corporate-types. But we ought not shed tears for either parties, but only for crocodiles.

Mark Engelman is head of intellectual property (IP) at Hardwicke and an IP research associate at St Edmunds College, Cambridge

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