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The Delhi High Court's judgement delivered on November 24, 2025 in Hermes International & Anr. V. Macky Lifestyle Private Limited & Anr.1 marks a significant addition to Indian jurisprudence on well-known trademarks. The Court recognised the iconic Hermes word mark, stylised marks as well as the three-dimensional shape of the Birkin bag as well-known trade marks under Section 2(1)(zg) read with Section 11(6) of the Trade Marks Act, 1999 ("Act"). This judgement holds rather considerable implications for luxury brand enforcement, shape marks and enforcement strategy in India's expanding fashion arena.
Factual Brief
Hermes International of France and its Indian subsidiary instituted the suit alleging trade mark infringement, passing off, copyright infringement, dilution, tarnishment, and unfair competition arising from the defendants' alleged unauthorised manufacture and sale of bags conceptually and visually identical to the well-known Hermès Birkin bag. The Hermès marks involved included the BIRKIN shape mark, the HERMÈS word mark and related stylised marks. The plaintiffs asserted that the defendants had advertised and offered for sale bags mimicking the Birkin's iconic shape and configuration using images identical to that of genuine Hermès products. The suit sought injunctive relief, rendition of accounts, damages, delivery up and a declaration of the marks as well-known trademarks under the Act. The declaration of well-known trade marks is governed primarily by Sections 2(1)(zg), 11(6), 11(7) and 11(9) of the Act.
Judicial Reasoning of Section 11(6) of the Act
Each of the statutory factors have been meticulously applied by the Court. The Court acknowledged Hermès' global reputation and noted that the Birkin bag has been consistently featured in leading international publications, fashion media and Indian coverage. Further, the presence of Hermès boutiques in Mumbai and Delhi contributed to public recognition. Hermès adopted the Birkin bag's design in 1984 drawing from its collaboration with Jane Birkin. The House of Hermès traces its origins to 1837 and the stylised 'duc-carriage-with-horse' device dates back to 1938 which is strong evidence of long and continuous commercial use. Substantial promotional efforts, advertising investments and global campaigns were highlighted. The Court referred to promotional and advertising expenditure documents evidencing consistent marketing across jurisdictions. The plaintiffs demonstrated registrations across 40+ countries, including India, Canada, Japan, Hong Kong and the United States. The Birkin shape mark was filed in India in 2008. These international and Indian registrations evidenced global recognition and consistent commercial use.
The judgement falls perfectly in line a number of decisions of Indian Courts that have strengthened protection for well-known trademarks. Daimler Benz AG v. Hybo Hindustan2 is one of them where the Court held that the 'Mercedes-Benz' mark possessed extraordinary reputation and could not be diluted. Further in Bajaj Electricals Ltd. v. Metals & Allied Products3 recognised that transborder reputation even without Indian presence. Then Apple Inc. v. Rohit Singh4 reaffirmed that well-known marks must be protected against all forms of dilution. The decision also reinforces India's robust doctrine of transborder reputation, a jurisprudential development rooted in cases like Whirlpool Co. v. N.R. Dongre5 where it was recognised that global reputation even without Indian commercial presence.
Shape Marks: Why Declaring the Birkin Shape as Well-Known Matters
One of the most consequential aspects of the judgement is the recognition of the three-dimensional configuration of the Birkin bag as a well-known trade mark. Shape marks historically face greater scrutiny because they maybe be functional or merely aesthetic. Indian courts have taken a conservative approach as seen in Zippo Manufacturing Company v. Anil Moolchandani6 where the shape of the Zippo lighter was protected based on inherent distinctiveness. The Birkin bag's shape is unmistakably distinctive and globally recognisable. That it is now recognised as a well-known trade mark in India provides Hermès with far stronger control over not only counterfeit copies but also conceptual imitations and knockoff brands trading on stylistic similarity. The Delhi High Court's willingness to recognise a three-dimensional luxury product configuration as a well-known mark is consistent with the court's earlier recognition of the Christian Louboutin red sole as a well-known trade mark7.
Implications for Enforcement and Litigation Strategy in India
Well-known mark status triggers statutory protection beyond similar goods, enabling enforcement against dissimilar goods, services, domain names, and merchandising attempts likely to create association. Hermès can now enforce the Birkin shape against far broader infringing activity. Businesses trading through e-commerce platforms, social media boutiques, or independent retail must ensure that the Birkin-inspired category rather popular in the fast-fashion ecosystem does not infringe the well-known mark. Platforms hosting third-party sellers must be vigilant. Under the Christian Louboutin v. Amazon8 jurisprudence evolving globally, intermediaries may face increased scrutiny when counterfeit luxury goods circulate through their channels.
Conclusion
The 2025 Delhi High Court decision recognising Hermes marks particularly the three-dimensional Birkin shape is a landmark in Indian intellectual property jurisprudence. It deepens the protection afforded to non-traditional marks, reflects India's continued respect for transborder reputation, and enhances enforcement mechanisms available to global luxury brands navigating India's evolving retail landscape. For businesses, the decision is a reminder that iconic shapes, configurations and stylised elements are not mere aesthetic flourishes but legally protectable trademarks commanding strong enforcement. For legal teams, the judgment underscores the importance of transparent disclosures, compliance with commercial courts' procedural rigour, and diligent brand monitoring in both physical and digital marketplaces. Above all, the recognition of the Birkin and Hermès marks signals India's steady alignment with international standards on protection of well-known marks, cementing the country's relevance as a sophisticated IP jurisdiction in the global luxury and fashion ecosystem.
Footnotes
1. CS(COMM) 716/2021
2. 1994 PTC 287 (Del),
3. 1988 PTC 133 (Bom)
4. (2021) SCC OnLine Del 5318
5. (1996) 5 SCC 714
6. SCC OnLine Del 2738
7. 2018 SCC OnLine Del 12915
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