Well-Known Trademarks: The Case of HERMÈS

Article by Samridh Ahuja

‘Hermès of Paris’ or ‘Hermès’ has been consistently ranked as the world’s most valuable luxury brand in different valuation and ranking studies published by leading consultancies.

According to global brand valuation firm Interbrand, Hermès came in 23^rd amongst the Best Global Brands 2022 with a brand valuation of USD 27.4 billion.[1]

The best example to demonstrate the popularity of Hermès products is a ‘Birkin’ bag. The resale value of a Birkin bag can be as high as 80-90% of its original retail price, according to luxury reseller The RealReal. This means that owning a Birkin bag can actually be a profitable investment if they are bought with a long-term view in mind.

In 2008, Hermès launched in India, with its flagship stores each in Mumbai and New Delhi.

Being a luxury brand like Hermès in India comes with many hurdles and challenges when there exists rampant infringement owing to presence of various counterfeits in the Indian Market.

HERMÈS v. CRIMZON

In a recent case, Hermès International filed a suit in the Hon’ble Delhi High Court against Crimzon Fashion Accessories Private Limited [2] alleging trademark infringement, against Crimzon Fashion Accessories Private Limited for using a deceptively similar mark.

In the suit for permanent injunction, Hermès claimed that Crimzon had infringing listings on its website using Hermès’ “” mark. It was further submitted that Hermès is a ‘well-known’ brand with stores set up in Mumbai and Delhi where the products of the plaintiff are displayed with their famous “H” / “” mark. On December 23, 2022, the Hon’ble Delhi High Court permanently restrained Crimzon Fashion from using the mark and directed it to remove infringing listings from its website. However, the issue of “whether ‘H’ is a well-known mark” was left undecided.

THE FIVE FACTOR TEST:

As cited under Section 11(6) of The Trade Marks Act, 1999, the Trade Marks law sets out five factors which are to be taken into consideration while determining whether a mark is a well-known trademark in India:

1. The knowledge or recognition of that trademark in the relevant section of the public including knowledge in India obtained as a result of the promotion of the trademark – The Counsel for Hermès submitted that products bearing the trademark are displayed at the stores in Mumbai & Delhi, revenue is generated by sales, and articles & reviews are published about the products bearing the mark by several well-known magazines such as Vogue, Harpar Bazaar etc.
2. The duration, extent and geographical area of any use of that trademark – The Counsel for Hermès submitted that “H” / “” mark had trans-border reputation due to extensive use and promotion, since 1997. Several events conducted in India where the products bearing the mark were showcased. Several celebrities have also been using the products bearing the trademark in India.
3. The duration, extent and geographical area of any promotion of the trademark, including advertising or publicity and presentation, at fairs or exhibitions of the goods or services to which the trademark applies- The Counsel for Hermès submitted that the plaintiff has been promoting its products bearing the “H” / “” extensively and continuously since 1997 including international magazines, websites & publications, published product catalogues, in-store advertising etc.
4. The duration and geographical area of any registration of or any application for registration of that trademark under this Act to the extent they reflect the use or recognition of the trade mark- The Counsel for Hermès submitted that Hermès has filed for and obtained registration of the trademark in India & in over 93 countries such as France, Canada, Switzerland, Singapore, Australia, the UAE etc.
5. The record of successful enforcement of the rights in that trademark; in particular, the extent to which the trade mark has been recognized as a well-known trade mark by any court or Registrar under that record- The Counsel for Hermès submitted that Hermès has been active in protecting & enforcing its rights against third parties including obtaining injunction orders before the German courts & obtaining undertakings from third parties.

In addition to above, the Counsel for Hermès also submitted that – “relevant section of the public” must be interpreted to mean the relevant section of the public where goods in question are intended to cater i.e. the fashion industry in the present case.

THE VERDICT

The Hon’ble Delhi High Court conquered with the submissions made by the Counsel for Hermès and agreed that the Five Factor Test was indeed satisfied and therefore declared the stylized logo , as a well-known trade mark under Section 2(z) (g) of the Trade Marks Act, 1999 vide its judgement dated February 8, 2023.

 

[1] Best Global Brands 2022, Interbrand, also available at https://interbrand.com/best-global-brands/hermes/
[2]HERMES INTERNATIONAL & ANR. V. CRIMZON FASHION ACCESSORIES PRIVATE LIMITED, 2023/DHC/000961.