Justice Karia examined each statutory factor under Section 11(6) of the Trade Marks Act (factors to determine if a mark can be treated as a “well-known” trademark) and held that Hermès’ marks met all criteria for being recognised as well-known.
1. Knowledge and public recognition
The Court recorded that Hermès operates stores in Mumbai and Delhi, displays Birkin bags publicly, and has been widely reviewed and recognised by publications including The Economic Times, Harper’s Bazaar, and others.
2. Duration, extent and geographical use
The judgment noted Hermès’ long commercial lineage going back to when it was founded in 1837, how it designed the Birkin in 1984, and its adoption of the carriage-with-horse logo in 1938.
3. Promotion and advertising
The Court noted extensive global promotion, advertising expenditure, listings on Hermès’ website, and repeated coverage in international fashion media.
4. Registrations in India and globally
The Court recorded that Hermès applied for shape-mark recognition of the Birkin 3D shape in India on July 29, 2008, and enjoyed trademark registrations for the word mark and logos in several countries, including the US, Canada, Switzerland and Germany.
5. Record of enforcement
The Court took into account Hermès’ vigilant history of protecting its trademark, including by securing multiple injunctions in India and abroad, and recognition of the Birkin shape as well-known by the French Federation of Leather and Travel Case Makers, as well as mention in an International Trademark Association (INTA) Bulletin
