How do you protect an iconic handbag? Milan court considers IP rights vesting in Longchamp’s Le Pliage

· copyright,trade marks,designs,Longchamp

When you have a handbag design bestseller with over 54 million copies sold around the world since its creation in 1993, the question concerning the IP rights vesting in it is not just an academic one.

All this was at the centre of a recent decision of the Milan Court of First Instance (decision 10280/2021). The case concerned Longchamp’s Le Pliage “cult” bag.

The Milan court accepted to enforce Longchamp’s 3D EU trade marks (EUTMs) protecting the shape of Le Pliage, but refused to acknowledge that copyright protection could also vest in such a design.

Background

In 2019, Longchamp initiated proceedings for trade mark and copyright infringement, as well as unfair competition, against a company making and selling a bag design closely resembling that of Le Pliage, specifically Le Pliage 1623 Nylon.

Longchamp's Le Pliage 1623 Nylon (left) and the defendant's product (right)

The characterizing elements of Le Pliage, according to Longchamp, would be the original combination of:

  • The trapezoid shape of the bag;
  • The slightly circular leather element between the handles of the bag, which covers part of the zipper;
  • The stitching on the front of the bag, which serves to highlight the contour of its internal pocket;
  • The tubular handles which end with circular elements on each side of the bag;
  • The small leather tabs at the sides of the zipper;
  • The contrast between the colours and materials (leather and nylon) used.

Longchamp owns EUTM registrations for the shape of Le Pliage (Nos 013928528 and 014461958).

Besides enforcing said registrations, Longchamp also argued that the shape mark would enjoy protection in accordance with Article 6bis of the Paris Convention and be protected by copyright under Article 2, No 10 of the Italian Copyright Act. In relation to the latter, it should be noted that the wording of the Italian Act allows for designs to receive copyright protection only insofar as they display creative character (carattere creativo) and artistic value (valore artistico).

The decision

Noting that it would be “necessary, first of all, to determine the protection actually available to the products at issue”, the Milan Court only accepted some of the claims advanced by Longchamp.

Insofar as the trade mark registrations are concerned, the Court held that the presumption of validity thereof in accordance with Article 127 EUTMR would find application.

Turning to copyright, referring to an earlier decision of the same court (decision 5443/2017), the Milan judges rejected any such claim: although the design of Le Pliage could be considered original, it would display no artistic value. Traditionally, such a value could be demonstrated through objective factors such as:

  • Recognition of aesthetic and artistic qualities by specialist cultural and institutional establishments;
  • Display in exhibitions or museums;
  • Publication in specialist press;
  • Awards received;
  • Market value that exceeds the functionality of the design;
  • Creation of the design by a well-known artist.

According to the Court, the claimant had failed to provide any evidence of the above.

The Court finally established unfair competition due to slavish imitation in accordance with Article 2598 No 1 Italian Civil Code.

Comment

The Longchamp case adds to a series of decisions in which the question of the type(s) of IP protection available to shapes was key.

Only a few weeks ago, The IPKat reported on the most recent Moon Boot trade mark decision, highlighting a situation which is the reverse of what happened in Longchamp: while in Longchamp the shape mark registrations were not questioned but copyright protection was refused, in Moon Boot the shape mark registrations were held partially inva