The Hermès Case

by Sigurd Fjærtoft-Andersen and Anna Eide


Clothes on hanger.

On 26 January 2024, the Oslo District Court ruled in a case concerning whether the importation of three counterfeit sweaters branded with the well-known Hermès trademark violated section 4 of the Norwegian Trademark Act regarding use of trademarks in commercial activities.

Hermès International S.A. initiated the case by filing a lawsuit against an individual for allegedly violating section 4 of the Trademark Act. The defendant was stopped by Norwegian customs authorities when crossing the border into Norway as the customs authorities suspected that the sweaters bearing the registered Hermès trademark might have been counterfeit products. The customs authorities decided to withhold the sweaters awaiting further investigation of the suspected infringement. Further, Hermès claimed remuneration and compensation for the defendant's breach of the Trademark Act, as well as destruction of the relevant sweaters.

Following the Court's clear confirmation that the importation constituted "use" of the sweaters pursuant to section 4, third paragraph letter c of the Trademark Act, the core issue of the case revolved around whether the defendant's importation of the sweaters implied that such use occurred within the context of "commercial activities,", cf. section 4 first paragraph. The Court clarified that the first question was whether the importation had occurred as part of the defendant's own commercial activities. In the event that this first question was answered negatively, the Court stated that the second question would be whether the import nonetheless infringed on Hermès' exclusive right to use its trademark because the importation was part of a sale involving an external seller engaged in commercial activities. The Court emphasized that the second question was only relevant in relation to Hermès' demand concerning destruction of the sweaters.

In its assessment of the first question, the Court highlighted the European Court of Justice's statements in case C-206/01 (Arsenal) and interpreted that private acquisition and use of copy products in private circumstances is not considered an infringement under the Trademark Act. Based on such interpretation and considering that Hermès had not presented any evidence that the defendant intended to market the imported sweaters, the Court concluded that the import quantity was too limited to indicate that the importation had occurred for purposes other than private use.

Regarding the second question, the Court referred to the European Court of Justice's decision in case C/98-13 (Rolex). In the Rolex case, the European Court of Justice held that the importation of a counterfeit Rolex watch could constitute an infringement of Rolex's trademark rights, warranting the destruction of the products, even when the buyer
did not infringe on any intellectual property rights.

However, the Court emphasized that the Rolex case clearly differs from the present case. In the Rolex case, the importation of the watch was included as part of the sale itself. However, in the present case, the defendant purchased and received the Hermès sweaters abroad. Since the Court did not find that the importation of the sweaters were associated with a sales agreement entered into while the defendant was in Norway, which was the decisive factor in the Rolex case, the Court concluded that the importation of the sweaters could not be considered as part of someone's commercial activities. Consequently, the Court concluded that the Rolex case did not give a legal basis for destruction of the sweaters.

The defendant was therefore acquitted of Hermès' claims for remuneration, compensation and destruction. As a key takeaway, the decision provides valuable clarification as to whether counterfeit products can be ordered to be destroyed if they have been imported by a private individual for personal use. Moreover, the decision indicates a clear distinction between scenarios where copied products are imported directly by private individuals and cases where the products are ordered from an foreign supplier engaged in commercial activities.

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