LUXURY ON TRIAL: HERMÈS’ SUCCESSFUL QUEST TO PROTECT ITS ICONIC IDENTITY

Soumya Juneja
1 hour ago
4 min read

INTRODUCTION

The judgment rendered in the case of Hermès International & Anr. v. Macky Lifestyle Pvt. Ltd. (CS(COMM) 716/2021^[1], decided on 24 November 2025, marks a significant stepping-stone in Indian trademark jurisprudence, not just for the well-recognised luxury brands in India but also for non-traditional trademarks like shape marks. The Court not only evaluated the infringement of the Hermès iconic Birkin 3D design but also examined the claim put forward by Hermès in accordance with the well-known status of its trademarks under the Indian law.

FACTUAL BACKGROUND

The Plaintiff (Hermès International, a French luxury brand) filed a suit for trade mark infringement and passing off, infringement of copyright, dilution, tarnishment, misappropriation, amongst other grounds against Macky Lifestyle Pvt. Ltd, an Indian company accused of selling deceptively similar products online without any authorisation by the Plaintiff. The Defendants were allegedly manufacturing, advertising, selling identical products as that of the Plaintiff’s, infringing their ‘Birkin Bag’ and the Trade Mark ‘Hermes’ and stylized marks ‘’ and ‘’ (hereinafter referred to as the “Subject Marks”). The second and the core issue left for adjudication in the case at hand was Hermès’s request for its marks to be declared “well-known” under the Trade Marks Act, 1999.

ANALYSIS

Firstly, the issue of infringement by the Defendants was discussed. The Defendants in the written statement submitted that they did not generate any revenue through the business since its commencement in 2021 and proceeded to shut the operations.

They also asserted that they had not purchased any infringing material to sell an identical or deceptively similar product as that of the Plaintiff. The Defendants also submitted that the images that the Plaintiff has procured are merely images from the internet and were purely used as a reference to manufacture bags without any dishonest intention to ride upon the reputation of the ‘Birkin’ bag and the Subject Marks. Hence, the suit was decreed accordingly with respect to the Defendants as per the Plaintiff’s prayers.

Secondly, the Court decided upon the declaration of the well-known status of the ‘Birkin’ Bag and the Subject Marks, within the meaning of Section 11(6) of the Trade Marks Act, 1999, which lays down the factors for determining whether a trademark has earned the status of a well-known trademark.

The Court emphasised on each factor in relation to Section 11(6) one-by-one and held that:

Factor 1: The Court took into account that the Plaintiff had stores in Mumbai and Delhi, and their three-dimensional shape marks were visibly displayed. Additionally, several famous Magazines had recognised the Plaintiff’s products with the Subject Marks. Thereby, rendering knowledge of the Subject Marks within the relevant section of the public in India as a result of promotion of the said marks. This satisfied the condition of knowledge and recognition of the Subject Marks amongst the relevant public under Section 11(6)(i).

Factor 2: The ‘BIRKIN’ bag was adopted in 1984 and ‘HERMES’ (an integral part of the Plaintiff’s trade name) laid foundations from 1837. Lastly, the stylized mark ‘’ had been in use since 1938. This was found to demonstrate the duration, extent and geographical area of the use of the Subject Marks under Section 11(6)(ii).

Factor 3: The Plaintiff had undertaken several promotional activities, and its products had been published in various well-recognised internal magazines and news, amongst various other platforms. This substantiated the duration, extent and geographical area, including promotion and advertising of the Subject Marks as required under Section 11(6)(iii).

Factor 4: Plaintiffs’ ‘Birkin’ Bag was filed for registration in India on July 29, 2008, and the Plaintiff had also filed for registration for the Subject Marks. The Plaintiff also had registrations in over forty countries for the ‘Birkin’ Bag and several international registrations for the other Subject Marks. This proved the duration and geographical area of the registration and application for registration of the ‘Birkin’ Bag and the Subject Marks under this Act to the extent that they reflect the use or recognition of the Subject Marks under Section 11(6)(iv).

Factor 5: Plaintiffs also placed on record that the ‘Birkin’ Bag had been declared as well-known by the President of the French Federation of Leather and Travel Case makers Leather Bands. Moreover, the Subject Marks had been acknowledged in the INTA Bulletin dated April 15, 2008 Volume 63 Number 8. This attested to the history of enforcing the ‘Birkin’ Bag and the Subject Mark and any court or Registrar findings recognizing it as well-known under Section 11(6)(v).

The Court recognised all the five factors and acknowledged the Plaintiffs’ substantial recognition and affiliation with the relevant people in the fashion industry as the Plaintiff was able to successfully establish continuous commercial presence over several decades in respect of the ‘Birkin’ Bag and the Subject Marks.

JUDGMENT

The Court held that Hermès’s three-dimensional Birkin shape mark, the Trade Mark ‘Hermes’ and stylized marks ‘’ and ‘’ met the statutory criteria to be designated as “well-known” trademarks under Section 2(1)(zg) of the Act. The Court formally declared each of these marks as well-known under the Indian Law. The issue of infringement became moot due to the Defendant’s affidavit; however, the well-known status has granted the ‘Birkin’ Bag and the Subject Marks greater protection. The Court applied a higher threshold of Section 11(6) of the Act, however, Hermès still lived up to the stricter criterion by proving global recognition, longevity and extensive promotional value. The Court had opined that, “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 (Paragraph 13 of the Judgement)”.

CONCLUSION

This judgment by the Delhi High Court is a pivotal judgment for non-traditional trademarks and acts as a foundation for foreign luxury brands in India. By securing a shape mark, the Court reasserted that even product design and shape can be granted protection under the Indian Trademark law, and the protection is not just restricted to traditional marks like, logos and names. This ruling established a precedent for fashion, luxury, retail, and design-driven brands seeking elevated protection for iconic elements.