Summary
In the case of Hermes International & Anr vs Macky Lifestyle Private Limited & Anr, the Delhi High Court declared the three-dimensional trade dress of the Birkin bag as a well-known trademark under Section 11(6) of the Trade Marks Act, 1999. The court found that the unique shape and configuration of the Birkin bag had acquired distinctiveness and reputation among the relevant public, making it well known.
Background
Hermes International and its Indian subsidiary brought an action against Macky Lifestyle and its director for infringing the trade dress of the Birkin bag. The plaintiffs alleged that the shape, configuration, and appearance of the bag were distinctive and associated exclusively with Hermes. They also sought a declaration of their three-dimensional shape mark as a well-known trademark.
Questions Before the Court
- Whether the three-dimensional shape and trade dress of the Birkin bag qualified as a well-known trademark under Section 11(6) of the Trade Marks Act, 1999?
Arguments Presented By the Parties
Plaintiffs (Hermes International & Anr):
- Submitted that the Birkin bag’s shape had been consistently used since 1984 and was widely associated with Hermes in India and globally.
- Provided evidence of sales, advertising, media coverage, and recognition in fashion publications highlighting the trade dress of the Birkin bag.
- Relied on registrations for the three-dimensional shape mark and earlier enforcement actions based on trade dress rights.
Defendants (Macky Lifestyle & Anr):
- Filed an affidavit stating that they had not manufactured or sold any such products.
- Did not oppose the plaintiffs’ claim for recognition of the trade dress as a well-known mark.
Court’s Analysis
Recognition of Birkin Bag Trade Dress as Well-Known
The court considered the five statutory factors under Section 11(6) to determine whether the Birkin bag’s three-dimensional trade dress qualified as a well-known mark:
- Recognition by the Public: The court looked at the visibility of the Birkin bag in luxury retail and fashion circles in India. It found that the distinctive shape and features of the bag were widely recognised among the relevant section of the public.
- Duration and Use: The court reviewed the continuous use of the shape since 1984 and noted its long association with the Hermes brand.
- Promotion and Display: The court considered the presentation of the bag in fashion shows, international magazines, and stores. It recorded that the trade dress was consistently projected as a high-value design.
- Registrations and Protection: The court looked at the three-dimensional mark registrations in India and other countries, which described the specific trade dress elements of the bag.
- Prior Enforcement: The court reviewed actions taken by Hermes against trade dress violations in India and abroad to establish recognition and protection of the bag’s shape.
Based on the evidence, the court held that the configuration, structure, and presentation of the Birkin bag had acquired distinctiveness and was capable of identifying its source, thereby satisfying the conditions under Section 11(6).
Findings
The court declared the three-dimensional shape and trade dress of the Birkin bag as a well-known trademark under Section 11(6) read with Section 11(7) of the Trade Marks Act, 1999. The suit was decreed in favour of the plaintiffs.
Relevant Paras
Para 12: “The Subject Marks have acquired extensive recognition and association within the relevant section of the public engaged in or familiar with the fashion industry.”
Para 14: “The Subject Marks being three dimensional shape mark of the Plaintiffs’ ‘Birkin’ Bag and the Trade Mark ‘Hermes’… satisfy the criteria for being declared as well-known Trade Marks.”
Para 15: “Accordingly, the Suit is decreed in favour of the Plaintiffs in terms of prayers (a) to (e) of the Plaint.”
Case Citation
Hermes International & Anr vs Macky Lifestyle Private Limited & Anr, CS(COMM) 716/2021, decided by the Delhi High Court on 24 November 2025.
Indian Kanoon Link: http://indiankanoon.org/doc/98846347/ (Visited on 20 December 2025)
Disclaimer
This case blog is based on the author’s understanding of the judgment. Understandings and opinions of others may differ. An AI application was used to generate parts of this case blog. Views are personal.
