Anand & Anand successfully represented Hermès International, a luxury French fashion house, in a litigation before the Delhi High Court securing well-known declaration for Hermes’ BIRKIN Bag, trademarks Hermes, and its logo.
The suit titled Hermes International & Anr. v. Macky Lifestyle Pvt. Ltd. & Anr. [CS (COMM.) 716 of 2021] was instituted by the French fashion house before the Delhi High Court in 2021 against infringement of trademarks, passing off, infringement of copyright etc. against the Defendants.
The Delhi High Court decreed the suit in favour of the Plaintiff and against the Defendants, granting relief of permanent injunction against infringement of Plaintiffs’ trademarks, passing off of Plaintiffs’ products, infringement of Plaintiffs’ copyright etc.
The Delhi High Court, while considering the Plaintiffs’ prayer seeking a well-known declaration, examined the material on record and the various factors laid out under Section 11(6) of Trade Marks Act, 1999 and held as below:
1. That the Plaintiffs’ marks, namely, three-dimensional shape of the BIRKIN Bag, trademarks Hermes, and the logo have acquired extensive recognition and association within the relevant section of the public engaged in or familiar with the fashion industry.
2. That the Plaintiffs’ long-standing reputation and consistent use of the Subject Marks across jurisdictions establishes a continuous and significant commercial presence.
3. That the documents on record indicated 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.
4. That there is 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 reinforcing the Subject Marks’ distinctiveness and reputation.
After a careful consideration of the material on record, the Court held that in view of the criterion under Section 11(6) read with Section 11(7) of the Trade Marks Act, 1999 stood satisfied and declared the marks being three-dimensional shape of the BIRKIN Bag, trademarks Hermes, and the logo as well-known trademarks in India.
The Team comprised Pravin Anand, Tusha Malhotra and Sugandha Yadav.
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