Hermès trademark victory in India

 

The Delhi High Court held that the 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.

Four trademarks owned by French luxury brand Hermes -- the distinctive three-dimensional shape of the iconic Birkin bag, the Hermes word mark, and two stylised logos associated with the brand -- have been recognised as 'well-known marks' in India by the Delhi high court.

Justice Tejas Karia passed the order in a trademark infringement and passing-off suit filed by Hermes International against Indian firm Macky Lifestyle Private Limited. The Paris-based brand had accused the company of advertising lookalike handbags online without authorisation.

The Indian company, in response, had submitted an affidavit, stating that it had neither manufactured nor sold any products resembling Hermes' designs, and had already wound up its business operations.

Following this assurance, the court proceeded to examine Hermes' request to have its marks formally recognised as well-known under the Trade Marks Act, 1999.

To substantiate its claim, Hermes presented extensive documentation, including trademark registrations across multiple jurisdictions, evidence of consistent brand enforcement, and global recognition of the Birkin bag's design in high-fashion publications.

The material averred that the Birkin bag's shape has acquired distinctiveness and international reputation through decades of exclusive association with Hermes.

After reviewing the evidence, Justice Karia noted that Hermes' marks have been recognised by industry groups abroad, along with how the brand has consistently protected its rights in India and other countries, shows that these marks are unique and well-known.

'The plaintiffs'(Hermes') long-standing reputation and consistent use of the subject marks across jurisdictions establish 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 order said.

The Court noted that Section 11(6) of the Act lays down five factors that the Registrar must take into account while considering an application for status of a well-known trade mark.

The factors are as follows:

The knowledge and recognition of the mark in the relevant section of the public including in India. In the instant case, Hermes has several stores in Mumbai and Delhi which prominently display the Birkin bag being the three-dimensional shape mark. Additionally, several magazines such as The Economic Times, Printfriendly and Harpar Bazaar have reviewed and recognized the plaintiff’s products.

The duration, extent and geographical area of use of the mark.

The duration, extent and geographical area of any promotion of the mark, including advertising or publicity and presentation at fairs and exhibitions. The Court noted that the plaintiff’s products bearing the subject marks have been extensively promoted and publicized in several international magazines globally.

The duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent that they reflect the use or recognition of the trade mark. The Court noted that the plaintiffs enjoy international and national registrations for the three-dimensional shape mark of the Birkin bag as well as of the trade mark ‘HERMES’ in over 40 countries including Canada, Hong Kong, Japan etc.

The record of successful enforcement of the rights in that trade mark, in particular the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record. The Court noted that the plaintiffs have been vigilant in protecting their subject mark from misuse and have obtained preliminary injunction against several third parties. The Court also noted that the three-dimensional shape of the Birkin bag has been declared as well-known by the President of the French Federation of Leather and Travel Case makers Leather Bands.