Delhi HC recognises Birkin bag shape and Hermès logos as well-known trademarks

New Delhi: The Delhi High Court on Monday recognised four trademarks owned by French luxury goods company Hermès, including the three-dimensional shape of the Birkin bag, as well-known marks under Section 11(6) of the Trade Marks Act, 1999, in the case Hermès International and Anr v Macky Lifestyle and Anr, according to Bar and Bench.

Justice Tejas Karia observed that Hermès’ marks had acquired extensive recognition among 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 said.

The Court concluded that the distinctive shape of the Birkin bag, the Hermès trademark, and 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," it held.

The ruling followed a trademark infringement suit filed by Hermès against Macky Lifestyle over the sale and advertising of counterfeit Hermès products. In support of its claim, Hermès submitted the history of its brand, including the use of the HERMÈS mark since 1837, the carriage-with-horse logo in 1938, the introduction of the Birkin shape in 1984, global trademark registrations, historical promotional materials, Indian registrations dating back to 1942, and past enforcement actions both in India and abroad.

The defendants, Macky Lifestyle and its director, filed an affidavit stating that they had not manufactured or sold infringing Birkin-style bags, had earned no revenue, and had closed their business. The images resembling Hermès bags had been downloaded from the internet for reference purposes. The plaintiffs accepted these statements, and the defendants raised no objection to the declaration of the marks as well-known.

Justice Karia noted that Hermès operates stores in Mumbai and Delhi, displays Birkin bags publicly, and has been widely covered by publications including The Economic Times and Harper’s Bazaar. The Court also considered Hermès’ long commercial presence, international promotion and advertising, registrations in India and abroad, and consistent enforcement of its trademark rights.

The Delhi High Court declared the Hermès Birkin 3D shape, the Hermès or HERMÈS word mark, and two associated stylised marks as well-known trademarks, and issued a permanent injunction restraining the defendants from using these marks.