Delhi High Court Designates Birkin Bag Shape and Hermès Logos as Well-Known Trademarks

The Delhi High Court declared four trademarks belonging to Hermès — including the three-dimensional configuration of the Birkin bag — as “well-known trademarks” under Section 11(6) of the Trade Marks Act, 1999. The judgment was issued by Justice Tejas Karia in the case Hermès International & Anr v Macky Lifestyle Pvt Ltd & Anr.

Justice Karia held that the evidence placed on record demonstrated the long-standing presence of the brand and its marks in the fashion sector and showed that they enjoy wide recognition. The Court observed:

“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.”

On this basis, the Court concluded that the Birkin bag shape, the HERMÈS word mark, and two stylised versions of the Hermès logo fulfilled the statutory requirements for recognition as well-known marks.

The order stated:

“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.”

Proceedings in the infringement suit

The declaration was granted in a suit filed by Hermès accusing Macky Lifestyle Pvt Ltd of promoting and dealing in imitation Hermès goods. In addition to seeking an injunction, Hermès asked the Court to grant well-known status to four trademarks forming part of its brand portfolio.

To demonstrate the reputation associated with the marks, Hermès produced its historical timeline: use of the HERMÈS mark since 1837, the adoption of the carriage-with-horse symbol in 1938, and the introduction of the Birkin bag shape in 1984. 

The company also relied on collections of international registrations, historical promotional material, Indian registrations dating from 1942 onwards, and details of enforcement actions carried out both within India and overseas.

During the hearing, Macky Lifestyle and its director filed an affidavit stating that they had not produced or sold any Birkin-style bags, had closed their business, had no revenue from the alleged products, and had merely used images taken from online sources for reference. Hermès informed the Court that these assertions were accepted. The defendants also indicated that they had no objection to the plaintiff’s plea for a declaration.

Assessment under Section 11(6)

Justice Karia examined each element under Section 11(6), which lays down the factors for identifying a mark as well-known:

1. Reputation and knowledge among relevant consumers: The Court recorded that Hermès operated stores in Delhi and Mumbai, publicly displayed its Birkin bags, and had consistent coverage in publications such as The Economic Times, Harper’s Bazaar, and other fashion-related media outlets.

2. Duration and extent of use: The Court noted the brand’s commercial history, including its establishment in 1837, the creation of the Birkin bag design in 1984, and the earlier adoption of the carriage-with-horse device.

3. Publicity and promotion: The judgment referred to Hermès’ global advertising and promotional expenditure, international media coverage, and promotional content published on its website.

4. National and international registrations: The Court recorded that Hermès filed its Indian application for the Birkin 3D shape mark on 29 July 2008 and that it held trademark protection for the word marks and logos in several countries, such as the United States, Canada, Switzerland, and Germany.

5. Enforcement record: The decision referred to the brand’s prior enforcement steps, including injunctions granted in India and elsewhere, recognition of the Birkin design by the French Federation of Leather and Travel Case Makers, and references made in the International Trademark Association’s bulletin.

After reviewing all factors, the Court declared the Birkin 3D shape, the HERMÈS word mark, and two stylised device marks as well-known marks. A permanent injunction was also issued restraining the defendants from using any of the marks.

Hermès was represented by Advocates Pravin Anand, Tusha Malhotra, and Sugandha Yadav of Anand & Anand.
Macky Lifestyle was represented by Advocates Amit Gaurav Singh and Abhishek Yadav.