Delhi High Court declares Birkin bag shape and three other Hermès marks as well-known trademarks

The Delhi High Court on Monday declared four trademarks owned by French luxury goods brand Hermès, including the three-dimensional shape of the Birkin bag, as well-known marks 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 after taking note that Hermès' marks had acquired extensive recognition by those familiar with the fashion industry.

"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 added.

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 to be declared 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," it held.

The ruling was passed on a trademark infringement suit filed by Hermès against Macky Lifestyle over the sale and advertising of fake Hermès goods.

In the said suit, Hermès also asked the Delhi High Court to confer the well-known status on four of its marks.

To support its claim, Hermès placed on record the entire chronology of its brand adoption - from the use of the HERMÈS mark since 1837, the adoption of the carriage-with-horse logo in 1938, and the introduction of the Birkin shape in 1984. The company also placed global trademark registrations, historical promotional material, Indian registrations dating back to 1942, and enforcement actions in India and abroad.

The Court noted that the defendants, Macky Lifestyle Pvt Ltd and its director, filed an affidavit stating they had not manufactured or sold any infringing Birkin-style bags, had earned no revenue, and had closed their business. The images resembling Hermès bags were said to be downloaded from the internet and used only as references. The Court recorded that the plaintiffs accepted these statements.

The defendants also raised no objection to Hermès’ request for the declaration of their marks as well-known trademarks.

Justice Karia examined each statutory factor under Section 11(6) of the Trade Marks Act (factors to determine if a mark can be treated as a "well-known" trademark) and held that Hermès' marks met all criteria for being recognised as well-known.

1. Knowledge and public recognition

The Court recorded that Hermès operates stores in Mumbai and Delhi, displays Birkin bags publicly, and has been widely reviewed and recognised by publications including The Economic Times, Harper’s Bazaar, and others.

2. Duration, extent and geographical use

The judgment noted Hermès’ long commercial lineage going back to when it was founded in 1837, how it designed the Birkin in 1984, and its adoption of the carriage-with-horse logo in 1938.

3. Promotion and advertising

The Court noted extensive global promotion, advertising expenditure, listings on Hermès’ website, and repeated coverage in international fashion media.

4. Registrations in India and globally

The Court recorded that Hermès applied for shape-mark recognition of the Birkin 3D shape in India on July 29, 2008, and enjoyed trademark registrations for the word mark and logos in several countries, including the US, Canada, Switzerland and Germany.

5. Record of enforcement

The Court took into account Hermès’ vigilant history of protecting its trademark, including by securing multiple injunctions in India and abroad, and recognition of the Birkin shape as well-known by the French Federation of Leather and Travel Case Makers, as well as mention in an International Trademark Association (INTA) Bulletin

Justice Karia proceeded to declare the Hermès Birkin 3D shape, the Hermès/HERMÈS word mark and two stylised device marks associated with the brand as well-known marks.

It also passed a permanent injunction to restrain the defendants from using these marks.

Hermes was represented by Advocates Pravin Anand, Tusha Malhotra and Sugandha Yadav from Anand & Anand.

Macky was represented by Advocates Amit Gaurav Singh and Abhishek Yadav.

[Read Judgment]