The article summarises case brought by Hermes International & Anr. (Plaintiffs) against Macky Lifestyle Private Limited & Anr. (Defendants) at the Delhi High Court for manufacturing, advertising, and selling products identical to the Plaintiffs’ ‘Birkin’ Bag and infringing on the ‘Hermes’ trademarks and stylized marks. Hermes, engaged in the luxury bags and accessories business, alleged that the Defendants use amounts to trademark infringement, copyright infringement, passing off, dilution, tarnishment, unfair competition, and misappropriation. Hermes claimed that use of their marks without authorization, resulted in reputational harm and loss of goodwill to them. The court not only considered the infringing activities of the Defendant but also examined the Hermes claim that three-dimensional shape mark of the ‘Birkin’ Bag and the ‘Hermes’ trademarks qualify for protection as well-known marks in India.

Plaintiff’s case

1. Hermes alleged that the defendants were infringing on their IP by advertising and offering for sale leather bags and other accessories that were similar to the Birkin bag.
2. The advertisements even had Hermes marks, thereby infringing trademarks, copyright and design rights of the plaintiff.

1. Hermes alleged copying of the 3-D shape of the Birkin bag and the Hermes marks, by Defendant thus leading to infringement, passing off and dilution of the Hermes’ goodwill.
2. Despite earlier court directions, the defendants failed to identify any vendor supplying infringing materials and failed to substantiate alleged sourcing of Birkin-like bags, prompting the court to seek affidavits on the factual gaps.
3. Hermes further submitted that the images uploaded by the defendants on various digital platforms created an impression that the defendants had authority to manufacture and sell such Birkin bags. This caused confusion among the consumers and unauthorized association with Hermes.

Defendant’s Stand

1. After repeated directions from the court, Defendant no. 2 filed an affidavit, in which they admitted that the business of the defendants started only in 2021. No revenue was ever earned, and the business was completely shut down.
2. Defendant submitted that no bags identical/similar to Birkin bags or goods associated with the Hermes marks were ever manufactured or sold and that the images were downloaded from the internet only as a reference and were never meant for any commercial activity.
3. The defendants lacked the technical know-how or machinery to manufacture Hermes–style bags. Furthermore, bank statements and receipts showed trading and business limited to leather straps and related material, not Birking bags.

Request for Well-Known-Mark Status

Apart from injunctive relief, Hermes sought recognition of the 3–Dimensional shape of the Birkin bag and HERMES marks ””, ””, as well-known marks under Section 11(6) of the Trademarks Act, 1999. There was no objection from the defendants to such a declaration. Hermes in support of their claim furnished extensive evidence on each statutory requirement of Section 11(6) to show that they meet the requirements to be declared as a well-known mark:

1. Significant recognition – Hermes argued that it operates luxury boutiques in Mumbai and New Delhi, displaying Birkin bags and other products and has significant recognition in the fashion industry through media coverage and brand awareness.
2. Duration and extent of use – The Birkin designs dates to 1980s while the Hermes legacy dates to 1837. These decades of long uninterrupted use demonstrate the concurrent use and legacy.
3. Global visibility – Hermes relied on high value promotions, brand events and coverage in internationally reputed fashion magazines and other media outlets. Worldwide registrations – Hermes relied upon protection of its Birkin 3-D shape and other Hermes marks in about 40 countries other than India.
4. Prior enforcement history – Hermes argued that it has in the past successfully enforced its rights internationally and in India through injunctions against unauthorized sellers.

Court’s Analysis and Decision

The court found that the Hermes marks had acquired extensive recognition, distinctiveness and reputation in the luxury fashion industry. Court noted that the Birkin bags shape and the Hermes logo have been used and promoted for decades with consistent consumer association. The enforcement history, global recognition and industry leadership established a strong record of exclusive commercial distinctiveness.

Accordingly, the Court granted Permanent Injunction restraining the Defendant from manufacturing, selling, advertising, or dealing in products identical or deceptively similar to the Plaintiffs’ Birkin’ Bag and the ‘Hermes’ trademarks and stylized mark.

The court held that all statutory factors under Section 11(6) read with Section 11(7) were satisfied and therefore the Birkin 3-D shape mark, other Hermes marks and the stylized device marks be declared as well-known marks in India.

Our Comment

The judgment provides a detailed application of the statutory factors for determining well-known status, including public recognition, duration and extent of use, promotional activities, registrations, and enforcement history. This serves as a useful precedent for future cases seeking similar declarations.