The Delhi High Court decreed the trademark infringement suit in favour of Hermes International (plaintiff), a French Luxury Brand, finding that the three-dimensional shape mark of the plaintiff’s ‘Birkin’ and the Trade Mark ‘Hermes’ satisfy the criteria for being declared as well-known Trade Marks in India.
Accordingly, granting recognition to ‘Hermes’ and ‘Birkin’ as well-known Trade Marks within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999, the Court restrained the defendants from manufacturing, using, advertising, offering for sale and selling identical products as those of the plaintiffs.
A Single Judge Bench of Justice Tejas Karia observed that the Subject Marks have acquired extensive recognition and association within the relevant section of the public engaged in or familiar with the fashion industry, and the plaintiffs’ long-standing reputation and consistent use of the Subject Marks across jurisdictions establishes a continuous and significant commercial presence.
Further, the Bench found from the documents on record that the Subject Marks ‘Hermes’ have been used and promoted for several decades, supported by considerable promotional expenditure and consistent visibility in the fashion industry worldwide.
The recognition accorded to the Subject Marks by industry associations in foreign jurisdictions, evidence of consistent enforcement of the plaintiffs’ rights in the Subject Marks before the Courts in India and foreign jurisdictions, reinforces the Subject Marks’ distinctiveness and reputation, concluded the Bench.
Briefly, the Plaintiffs had filed a suit for infringement and passing off the trade mark, infringement of copyright, passing off, dilution, tarnishment, rendition of accounts, damages, delivery up, unfair competition, and misappropriation against the defendants, alleging that they were manufacturing; using, advertising, offering for sale and selling identical products as those of the plaintiffs, and infringing the three-dimensional shape mark of the plaintiffs’ ‘Birkin’ Bag and the Trade Mark ‘Hermes’, without any authorisation, to dilute the goodwill earned by the plaintiffs.
Appearances:
Advocates Pravin Anand, Tusha Malhotra, and Sugandha Yadav, for the Plaintiff
Advocates Amit Gaurav Singh and Abhishek Yadav, for the Defendant
