Recognition of the HERMES “Birkin” 3D Shape and Associated Marks as Well‑Known Trademarks in India
Commentary on Hermes International & Anr. v. Macky Lifestyle Private Limited & Anr., 2025 DHC 10346 (Delhi High Court, 24 November 2025)

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1. Introduction

This judgment of the Delhi High Court, delivered by Justice Tejas Karia, is significant for two distinct but related reasons:

• It results in a decree in favour of Hermes International for trademark infringement and passing off against an Indian MSME, Macky Lifestyle Private Limited, even though the defendants claimed never to have actually manufactured or sold infringing bags; and
• It formally declares, under the framework of Section 11(6) of the Trade Marks Act, 1999, that:
  • the three-dimensional (3D) shape mark of the iconic “Birkin” bag,
  • the word mark HERMES, and
  • the stylised “HERMES carriage-and-horse” logos
  are well‑known trademarks in India.

The plaintiffs are:

• Plaintiff No. 1: Hermes International, a French corporation engaged in the business of luxury bags and accessories;
• Plaintiff No. 2: its Indian subsidiary, operating the Hermes business in India.

The defendants are:

• Defendant No. 1: Macky Lifestyle Private Limited, an Indian company dealing in leather goods; and
• Defendant No. 2: a director of Defendant No. 1.

The suit (CS(COMM) 716/2021) sought reliefs for infringement of trademarks and copyright, passing off, dilution, tarnishment, delivery-up, damages, and related reliefs, on the allegation that the defendants were offering for sale products identical to Hermes’ “Birkin” bags and using Hermes’ marks without authorisation (para 1).

Ultimately, the case crystallised around two principal outcomes:

1. The defendants’ affidavit admissions that they had neither manufactured nor sold any infringing products, had closed down their business, and had used only internet images as references, which led the plaintiffs to confine themselves to injunctive and declaratory relief; and
2. The plaintiffs’ request that the court declare their key marks — including the Birkin 3D shape — as well‑known trademarks under Section 11(6) of the Trade Marks Act, which the defendants did not oppose.

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2. Summary of the Judgment

The core features of the decision can be summarised as follows:

2.1 Decree on the Basis of Defendants’ Affidavit Admissions

Following earlier directions (order dated 15.04.2025), Defendant No. 2 filed an affidavit on 18.06.2025 (paras 5–6), in which he stated, inter alia:

• The defendants started operations in June 2021 and did not earn any revenue before closing down the business (para 6(2));
• Macky Lifestyle Pvt. Ltd. is no longer conducting business; Defendant No. 2 is now employed elsewhere (paras 6(2)–(3));
• The defendants:
  • had not manufactured any conceptually or visually identical “Birkin” or Hermes bags,
  • had not sold any such bags,
  • claimed not to possess the skill, know-how, or equipment to do so, and
  • asserted that the impugned images were merely downloaded from the internet and used as references for bags they hoped to manufacture (paras 6(7)–(8)).
• The defendants maintained there was no vendor from whom any “infringing material” had been procured, since no infringing goods were ever actually produced (paras 6(7)–(9)).

The plaintiffs, through their counsel, accepted these statements (para 7) and invited the court to decree the suit in terms of prayers (a) to (d) of the plaint (primarily injunctive and ancillary reliefs), while also pressing for prayer (e) — a declaration that the subject marks are well‑known trademarks under Section 11(6) (para 8).

The court:

• Condoned the delay in filing the affidavit (para 5);
• Took the affidavit on record; and
• Accepted the parties’ positions, ultimately decreeing the suit in terms of prayers (a) to (e) (para 15).

2.2 Declaration of the Subject Marks as Well‑Known Trademarks

The central doctrinal development is the court’s express holding that the following “Subject Marks”:

• the three-dimensional shape mark of the Hermes “Birkin” bag, and
• the word mark HERMES and the stylized “carriage and horse” logos

qualify as well‑known trademarks in India within the meaning of Section 2(1)(zg) of the Trade Marks Act (para 14).

To reach this conclusion, the court:

• Set out the factors under Section 11(6) (para 9);
• Recited the evidence placed on record by Hermes, organised around the five statutory factors (para 11.1–11.5);
• Noted the absence of objection from the defendants (para 10); and
• Held that, in light of Section 11(6) read with Section 11(7), the Subject Marks satisfy the criteria for well‑known marks in India (paras 12–14).

No monetary relief or accounts of profits were granted; the decree is limited to injunctive and declaratory relief (paras 15–16). Costs were not awarded.

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3. Detailed Analysis

3.1 Procedural and Factual Background

3.1.1 The Plaintiffs’ Allegations

Hermes alleged that the defendants were, without authorisation, “manufacturing; using, advertising, offering for sale and selling” products identical to those of the plaintiffs (para 1), thereby:

• Infringing the 3D shape trademark of the “Birkin” bag;
• Infringing the HERMES word mark and the stylised Hermes logos;
• Engaging in passing off, dilution, and tarnishment of Hermes’ goodwill;
• Infringing copyright; and
• Committing unfair competition and misappropriation.

The essence of the complaint was that the defendants were using, or preparing to use, images and representations of bags that were “identical” or “deceptively similar” to Hermes’ iconic Birkin bag and associated trademarks, thus exploiting Hermes’ reputation to promote their own products.

3.1.2 Discovery Gaps and the 15.04.2025 Order

The court, on 15.04.2025, recorded that despite earlier replies and an affidavit filed on 28.02.2025, the defendants had not disclosed crucial information (para 4), such as:

1. The name of the vendor from whom the alleged infringing materials were procured (as per the plaintiffs’ documents at p. 663);
2. The alleged supplier of the plaintiffs who provided information to the defendants (p. 752); and
3. Details of a transaction allegedly conducted via IndiaMART (p. 18 of the defendants’ documents).

The court granted the defendants two weeks to file a further affidavit clarifying these issues (para 4).

3.1.3 The 18.06.2025 Affidavit and Substantive Admissions

In the subsequent affidavit (18.06.2025), Defendant No. 2 stated (paras 6–9):

• The business of Defendant No. 1 had effectively not taken off: operations began in June 2021, but no revenue was earned until closure (para 6(2));
• Defendant No. 1 had no GST registration, allegedly due to the low volume of transactions and only “sampling pieces and raw material” (para 6(5));
• The defendants were primarily manufacturers of leather watch straps and leather raw hides and had not commenced production of bags (para 6(7));
• No infringing Birkin or Hermes bags were manufactured or sold; the images that appeared to depict such products were downloaded from the internet for reference only (paras 6(7)–(8));
• Bank transaction details and vendor lists (relating to belts and wallets) showed no purchase of material connected to Hermes’ products (para 6(9)); and
• Given the absence of any infringing products, there was no “vendor” for infringing materials (para 6(8)–(9)).

By candidly stating that the images were not photographs of goods they had made, but rather borrowed images from the internet, the defendants directly responded to Hermes’ assertions that the defendants were using images of Hermes’ products in their own promotional materials.

3.1.4 Plaintiffs’ Strategic Concession and Narrowing of Relief

The plaintiffs’ counsel expressly accepted:

• That the defendants had not earned any revenue and had closed down their business; and
• That the defendants had neither manufactured nor sold any goods identical or deceptively similar to Hermes’ products; and
• That the images in question were internet downloads used as references, and that the defendants asserted no dishonest intent (para 7).

On that basis, Hermes sought decree only in terms of prayers (a)–(d) and (e), effectively signalling a willingness to forgo damages and accounts, in light of:

• The defendants’ financial insignificance in this episode (no revenue, MSME status); and
• The closure of the defendants’ business.

This is a pragmatic litigation strategy: the plaintiffs preserve and strengthen their legal rights (through injunction and the well‑known trademark declaration) without expending resources on proving and recovering monetary loss from a defendant with negligible commercial activity.

3.2 Precedents Cited and Statutory Framework

3.2.1 Statutory Provisions Relied Upon

The judgment explicitly relies on:

• Section 11(6) of the Trade Marks Act, 1999, which lists the factors to be considered when determining whether a trademark is “well‑known” (para 9);
• Section 11(7), which guides how to assess the recognition of a mark among the relevant section of the public (para 14); and
• Section 2(1)(zg), which defines “well‑known trademark” (para 14).

The court reproduces Section 11(6) (para 9) and then organises Hermes’ evidentiary material around each of the five statutory factors (para 11.1–11.5).

3.2.2 Absence of Judicial Precedents in the Judgment Text

Notably, the judgment text provided does not cite any earlier Indian or foreign judicial decisions. The court:

• Relies directly on the text of the Trade Marks Act; and
• Assesses Hermes’ evidence against the statutory criteria.

This makes the decision relatively self‑contained: its reasoning is built more on the statutory framework and factual record than on previous case law, even though extensive Indian jurisprudence on well‑known trademarks exists.

3.2.3 Broader Jurisprudential Context (Outside the Judgment)

Although not cited in the judgment itself, this decision fits within a well‑developed line of Indian authority in which:

• High courts (particularly the Delhi High Court) have consistently recognised famous foreign marks as entitled to strong protection, including protection against dilution and cross‑category use; and
• Courts have not hesitated to declare trademarks as “well‑known” in the course of infringement suits, even though Section 11 is worded in terms of the Registrar’s duties.

This case reinforces, rather than departs from, that trajectory. It is especially notable, however, for explicitly identifying a 3D shape mark (the Birkin bag shape) as a well‑known trademark in India, and for doing so via a detailed Section 11(6) analysis on the basis of evidence adduced in an adversarial civil suit.

3.3 The Court’s Legal Reasoning

3.3.1 Use of Affidavit Admissions and the Decree

Procedurally, the suit is effectively resolved on the basis of:

1. The defendants’ unequivocal affidavit statements; and
2. The plaintiffs’ acceptance of those statements and their request for limited relief.

While the judgment does not explicitly invoke particular provisions of the Code of Civil Procedure, the structure closely resembles:

• A decree on admissions: the defendants’ own affidavit eliminates factual controversy concerning their past conduct (e.g., no actual sales, no manufactured goods); and
• A consent or non‑contested decree: defendants do not oppose either the injunctive relief or the well‑known mark declaration (paras 7 & 10).

This procedural posture is important: the court is not resolving a sharply contested factual dispute about whether specific infringing goods were made or sold. Instead, the defendants concede non‑use; the plaintiffs accept; and the court focuses on (a) recording that arrangement in a decree and (b) deciding whether, despite this, Hermes’ marks should be declared well‑known.

Substantively, however, the decree necessarily bars the defendants from:

• Using the Birkin shape or Hermes marks in any manner, including advertising or offering for sale (even if no sale has yet occurred); and
• Engaging in any further conduct amounting to infringement, passing off, or dilution.

Under the Trade Marks Act, advertising or offering for sale goods under another’s trademark is itself a species of “use” and can constitute infringement, even absent actual sale. Although the judgment does not spell this out doctrinally, the relief granted is consistent with that legal position.

3.3.2 The Well‑Known Trademark Analysis under Section 11(6)

The court’s principal analytical work is conducted under Section 11(6), as follows.

(a) Factor 1 – Knowledge or Recognition of the Mark (Section 11(6)(i))

The court notes Hermes’ evidence of recognition of the Subject Marks in the relevant section of the public (para 11.1), including:

• Hermes stores in Mumbai and Delhi, where products bearing the Birkin 3D shape mark are displayed;
• Hermes’ activity report for 2020, detailing retail distribution and revenue;
• Coverage in Indian and international media (The Economic Times, Harper’s Bazaar, etc.), reviewing and recognising products bearing the Subject Marks.

Later, in its conclusion, the court emphasises 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” (para 12; emphasis added).

This is doctrinally important: it shows that to be “well‑known,” a mark need not be known to the public at large, but rather to a “relevant section” of the public (a point reflected in Section 11(7)). Luxury brands like Hermes, whose products target an affluent and specialised consumer base, can therefore qualify for well‑known status even if only a relatively narrow, but commercially relevant, section of Indian society recognises the marks.

(b) Factor 2 – Duration, Extent and Geographical Area of Use (Section 11(6)(ii))

Hermes adduced historical and branding information, including (para 11.2):

• The Birkin bag was designed in 1984 (originating from an encounter between Jean‑Louis Dumas and the British actress Jane Birkin);
• Hermes traces back to its founder, Thierry Hermes, who began in 1837 in Paris;
• The stylised carriage‑and‑horse mark (“Hermes avec attelage”) was adopted in 1938.

By pointing to long and continuous use of the marks over several decades, Hermes satisfies the “duration” element. Their well‑established historical provenance in France and globally supports the inference that the marks have a longstanding and stable association with Hermes in the minds of consumers and industry participants.

(c) Factor 3 – Promotion and Advertising (Section 11(6)(iii))

Hermes placed on record substantial material about the promotion of the Subject Marks (para 11.3), including:

• Extensive promotional activities, evidenced by advertising expenditure;
• Publicity in international magazines and on the Hermes website;
• Visibility of the Subject Marks at exhibitions and in other public fora.

Even though the judgment does not quantify the expenditure, the references indicate that the court is satisfied about:

• Both the intensity and duration of promotion; and
• Its global reach, which includes India by virtue of online access and Indian media coverage.

(d) Factor 4 – Registrations and Applications (Section 11(6)(iv))

Under this factor, Hermes relied on a robust portfolio of registrations and applications (para 11.4):

• The Birkin 3D shape mark was applied for in India on 29.07.2008;
• Hermes holds international and national registrations for the Birkin 3D mark in more than 40 countries;
• Registrations and/or applications for the HERMES word mark and stylised logos exist in India and multiple other jurisdictions (e.g. Canada, United States, Switzerland, Germany).

Such a broad and longstanding registration footprint is strong evidence that:

• Hermes regards these marks as core brand assets; and
• Third‑party use of similar marks is likely to cause confusion or dilution, which Hermes has systematically pre‑empted by securing rights across jurisdictions.

(e) Factor 5 – Record of Enforcement (Section 11(6)(v))

This factor looks at whether there is a “record of successful enforcement” of the mark and the extent to which it has been recognised as well‑known (para 11.5). Hermes placed evidence that:

• They have actively enforced rights in the Subject Marks in India and abroad, obtaining preliminary injunctions against several infringers;
• The Birkin 3D shape mark has been recognised as well‑known by the President of the French Federation of Leather and Travel Case Makers / Leather Bands;
• The well‑known nature of the Subject Marks has been recorded in an INTA (International Trademark Association) Bulletin dated 15.04.2008 (Vol. 63 No. 8).

The court treats industry and association recognition, as well as foreign enforcement, as relevant supporting evidence in assessing the marks’ global and domestic reputation.

(f) Synthesis and Application of Section 11(6) and (7)

Having reviewed the evidence, the court concludes that:

• The Subject Marks enjoy “extensive recognition and association” in the relevant fashion‑related public (para 12);
• Hermes has a “long‑standing reputation and consistent use” of these marks across jurisdictions, creating a “continuous and significant commercial presence” (para 12);
• The marks have been “used and promoted for several decades,” backed by “considerable promotional expenditure” and “consistent visibility in the fashion industry worldwide” (para 12); and
• Recognition by industry associations and the record of enforcement “reinforces the Subject Marks’ distinctiveness and reputation” (para 13).

On that basis, and expressly invoking Section 11(6) read with Section 11(7), the court holds that the Birkin 3D shape and the HERMES word and stylised marks:

• “satisfy the criteria for being declared as well‑known Trade Marks in India” (para 14); and
• “merit recognition as well‑known Trade Marks within the meaning of Section 2(1)(zg)” (para 14).

This is a clear, formal declaration that the Subject Marks are well‑known trademarks in India.

3.4 Impact and Implications

3.4.1 Strengthening Protection for Luxury and Non‑Traditional Marks

The judgment significantly strengthens protection for:

• Luxury brands: It confirms that luxury trademarks, even if high‑end and targeted to a niche consumer base, can be recognised as “well‑known” if they enjoy strong recognition in the relevant fashion‑industry public.
• Non‑traditional marks: Explicitly declaring a 3D shape mark (the Birkin bag’s shape) as well‑known underscores that shape and trade‑dress can achieve well‑known status, not just word and logo marks.

Once marks are declared well‑known:

• They enjoy broader protection across dissimilar goods and services, to prevent dilution of distinctiveness or unfair advantage being taken of their reputation; and
• Registrars and courts are expected to be particularly vigilant in rejecting or restraining later marks that may conflict with them.

3.4.2 Reliance on Global Reputation and Foreign Evidence

The court is comfortable relying on:

• Global use, registrations, and promotions of the Subject Marks; and
• Foreign and industry recognition (e.g., French federation, INTA bulletin).

This reflects and reinforces the principle that:

• A trademark’s reputation is not confined to national borders in an era of global media and online commerce; and
• Foreign recognition can support, though not substitute, evidence of reputation in India.

3.4.3 Emphasis on the “Relevant Section of the Public”

The court’s specific reference to recognition in “the relevant section of the public engaged in or familiar with the fashion industry” (para 12) is doctrinally valuable because it:

• Aligns with Section 11(7), which focuses on consumers, distribution channels, and business circles relevant to the goods/services; and
• Clarifies that a mark need not be known to every Indian consumer to qualify as well‑known: concentrated recognition in a specialist or affluent segment may suffice.

3.4.4 Guidance for Rights Holders Seeking Well‑Known Status

The judgment offers a practical roadmap for brand owners:

• Structure evidence by statutory factor: Hermes succeeded in part because it presented evidence clearly under each Section 11(6) head (knowledge, use, promotion, registrations, enforcement).
• Include Indian‑specific touchpoints: Indian stores, Indian media coverage, and Indian filings are all explicitly noted, reinforcing domestic relevance.
• Use foreign recognition and enforcement as corroborative material to show global renown and proactive brand protection.

3.4.5 Implications for Small Businesses and Online Sellers

For MSMEs and online sellers, the case sends a strong cautionary signal:

• Using downloaded images of famous branded products, even “for reference” or as indicative of what one could manufacture, can place a business at risk of infringement actions.
• The law regards advertising and offering for sale as forms of trademark use; actual manufacture or sale is not necessary for injunctive relief.
• Once a mark is well‑known, even a nascent or low‑revenue business can be permanently restrained from using similar signs, irrespective of actual confusion or scale of operations.

3.4.6 Litigation Strategy: Foregoing Damages in Favour of Declaratory and Injunctive Relief

Hermes’ choice to limit relief to injunctions and a well‑known mark declaration (and not to press for damages or accounts) highlights a strategic consideration:

• In cases where the infringer is small, has no significant revenue, and has ceased operations, the primary objective may be to:
  • Stop the infringement immediately; and
  • Obtain a judicial recognition of the brand’s elevated status (well‑known mark) that strengthens future enforcement.
• Pursuing damages can be resource‑intensive and may not be cost‑effective against small or defunct entities.

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4. Complex Concepts Simplified

4.1 Well‑Known Trademark

A well‑known trademark (Section 2(1)(zg) of the Trade Marks Act) is a mark that is:

• Known to a substantial portion of the relevant public in India; and
• Associated in their minds with a particular source (brand owner) for certain goods or services.

Why it matters:

• Well‑known marks receive protection even for dissimilar goods or services, to prevent dilution of reputation.
• They are protected even without being registered or used for every category of goods/services.

4.2 3D Shape Mark

A 3D shape mark is a trademark that consists of the three‑dimensional shape of a product or its packaging (trade dress). For example, the shape of the Birkin bag itself, not just the word “Hermes” or the carriage logo.

Protection is available only where:

• The shape is distinctive of the brand (consumers recognise the shape as indicating source); and
• The mark does not merely confer monopoly over a purely functional shape (trademark law is not a substitute for patents or designs for functionality).

4.3 Infringement vs. Passing Off

• Infringement: A statutory remedy available when a registered trademark is used by another without authorisation in a manner likely to cause confusion or association, or to take unfair advantage or be detrimental to its reputation.
• Passing off: A common law remedy protecting unregistered or broader aspects of a brand’s trade dress and goodwill, where a defendant misrepresents its goods or business as being associated with or endorsed by the plaintiff.

In this case, Hermes pleaded both, as is standard in brand enforcement actions.

4.4 Dilution and Tarnishment

• Dilution: Occurs when the unique identity or distinctiveness of a famous mark is weakened by unauthorised use, even without confusion or competition (e.g., using “Birkin” for unrelated, low‑end products).
• Tarnishment: A form of dilution where the mark’s reputation is harmed by being associated with inferior or unsavoury goods/services.

Well‑known marks are especially protected against these harms because their value lies heavily in distinctiveness and brand image.

4.5 “Relevant Section of the Public”

Under Sections 11(6) and 11(7), the question is not whether everyone in India knows the mark, but whether:

• A significant portion of those who:
  • buy, use, or are potential consumers of the goods/services,
  • participate in distribution channels, or
  • are involved in related business circles
• recognise the mark as indicating the goods/services of a particular enterprise.

In this case, that “relevant section” is those engaged in or familiar with the fashion and luxury goods industry.

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5. Conclusion

This judgment is an important addition to Indian trademark jurisprudence for several reasons:

1. Formal Recognition of the Hermes Birkin 3D Shape and Associated Marks as Well‑Known
   The court, after a structured analysis under Section 11(6) read with Section 11(7), holds that the Birkin 3D shape, the HERMES word mark, and the stylised carriage logo are well‑known trademarks in India. This significantly expands their protective ambit and confirms that 3D product shapes can attain well‑known status.
2. Evidence‑Driven Application of the Statute
   Rather than relying on prior judicial precedents, the court grounds its reasoning squarely in the statutory criteria and the extensive documentary record submitted by Hermes, illustrating best practices for rights holders seeking a well‑known declaration.
3. Clarification on the Relevant Public for Luxury Brands
   By focusing on the “relevant section of the public engaged in or familiar with the fashion industry,” the court underscores that luxury marks can be well‑known even if recognised primarily by a niche, high‑end consumer base and industry insiders.
4. Global Reputation and Foreign Recognition as Supporting Evidence
   The court comfortably considers Hermes’ international registrations, enforcement actions, and recognition by foreign associations in assessing reputation in India, reaffirming that trademark renown is cross‑border in nature.
5. Pragmatic Enforcement Strategy
   The decree arises from a procedurally straightforward scenario: defendants admit non‑manufacture and non‑sale, plaintiffs accept the admissions, and the court issues a decree for injunctive and declaratory relief. This shows that even where actual commercial exploitation is limited or absent, courts will move to protect famous marks and can use such proceedings as a vehicle for recognising well‑known status.

In the broader legal landscape, Hermes International & Anr. v. Macky Lifestyle Pvt. Ltd. & Anr. stands out as a clear, evidence‑based confirmation that:

• Iconic luxury brand identifiers, including non‑traditional signs like product shapes, enjoy the highest echelon of protection in Indian trademark law; and
• Indian courts are willing to grant well‑known mark declarations in infringement suits, provided the statutory factors are convincingly established on the record.

For brand owners, especially in fashion and luxury sectors, the case offers a practical template for building and presenting a well‑known mark case. For smaller businesses and online sellers, it is a pointed reminder that casual or “illustrative” use of famous brands’ imagery can trigger serious legal consequences, even in the absence of actual sales.