Delhi High Court Recognises Birkin Bag Shape And Hermès Logos As Well-Known Trademarks
Delhi High Court recognises Birkin bag shape and Hermès logos as well-known trademarks under Indian law.
Delhi High Court Recognises Birkin Bag Shape and Hermès Logos as Well-Known Trademarks
The Delhi High Court on Monday recognised four trademarks owned by French luxury brand Hermès, including the three-dimensional shape of the Birkin bag, as well-known trademarks under Section 11(6) of the Trade Marks Act, 1999 [Hermès International & Anr v. Macky Lifestyle Pvt Ltd & Anr].
Justice Tejas Karia passed the judgment, noting that Hermès' marks had gained extensive recognition among those familiar with the fashion industry.
Court Observations on Hermès’ Reputation
"The Plaintiffs’ (Hermès) long-standing reputation and consistent use of the Subject Marks across jurisdictions establishes a continuous and significant commercial presence. The documents on record also indicate that the Subject Marks have been used and promoted for several decades, supported by considerable promotional expenditure and consistent visibility in the fashion industry worldwide,"- the court observed
The Court concluded that the unique shape of the Birkin bag, the Hermès trademark, as well as two stylised versions of the Hermès mark, deserved recognition as well-known trademarks.
"Accordingly, the Subject Marks merit recognition as well-known Trade Marks within the meaning of Section 2(1)(zg) of the Act. Hence, it is declared accordingly,"- the judgment added.
Background of the Case
The ruling arose from a trademark infringement suit filed by Hermès against Macky Lifestyle Pvt Ltd over the sale and advertisement of counterfeit Hermès products. Hermès sought to have four of its marks recognised as well-known in India. To support its claim, the company submitted a detailed record of its brand history, including:
- Use of the HERMÈS mark since 1837
- Adoption of the carriage-with-horse logo in 1938
- Introduction of the Birkin bag shape in 1984
- Global trademark registrations, historical promotional material, Indian registrations dating back to 1942
- Enforcement actions taken both in India and internationally
Defendants’ Response
The Court noted that the defendants, Macky Lifestyle Pvt Ltd and its director, filed an affidavit stating they had neither manufactured nor sold infringing Birkin-style bags, had earned no revenue, and had closed their business. Images resembling Hermès products were downloaded from the internet and used only as references. The plaintiffs accepted these statements. The defendants did not oppose Hermès’ request for recognition of its marks as well-known trademarks.
Evaluation Under Section 11(6)
Justice Karia examined each statutory factor under Section 11(6) of the Trade Marks Act to determine whether a mark qualifies as well-known:
- Knowledge and Public Recognition: Hermès operates stores in Mumbai and Delhi, displays Birkin bags publicly, and is widely recognised by publications including The Economic Times and Harper’s Bazaar.
- Duration, Extent, and Geographical Use: Hermès’ commercial lineage dates back to 1837. The Birkin bag was designed in 1984, and the carriage-with-horse logo adopted in 1938.
- Promotion and Advertising: The Court highlighted Hermès’ extensive global promotion, advertising expenditures, presence on its official website, and repeated coverage in international fashion media.
- Registrations in India and Globally: Hermès applied for shape-mark recognition of the Birkin 3D shape in India on 29 July 2008 and holds trademark registrations for the word mark and logos in countries including the US, Canada, Switzerland, and Germany.
- Record of Enforcement: Hermès has a strong enforcement record, securing multiple injunctions in India and abroad. The Birkin shape has also been recognised as well-known by the French Federation of Leather and Travel Case Makers and mentioned in an International Trademark Association (INTA) Bulletin.
Court Ruling
Justice Karia declared the following as well-known trademarks:
- Hermès Birkin 3D shape
- Hermès/HERMÈS word mark
- Two stylised device marks associated with the brand
The Court also passed a permanent injunction restraining the defendants from using these marks.
Legal Representation
Anand & Anand Hermès represented Hermès through Advocates Pravin Anand, Tusha Malhotra, and Sugandha Yadav, while Macky Lifestyle Pvt Ltd was represented by Advocates Amit Gaurav Singh and Abhishek Yadav.
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