Delhi High Court declares the ‘H’ logo of Hermes International, a Well-Known Trade Mark

INTRODUCTION

Recently, in the case of Hermes International & Anr. v. Crimzon Fashion Accessories Private Limited [1], the Hon’ble Delhi High Court after considering each factor enumerated in Clauses (i) to (v) of Section 11(6) of the Trade Marks Act, 1999 (hereinafter the “Act”), declared the stylized 'H' logo of French luxury brand Hermes International (hereinafter the “Plaintiff”) as a well-known trademark under Section 2(1)(zg) of the Act.

BACKGROUND

The present suit was instituted by the Plaintiff, restraining the Defendant from using an identical, deceptively or confusingly similar registered trade mark ‘H ORAN’of the Plaintiff. Vide order dated December 23, 2022, the Court decreed in favour of the Plaintiff and against the Defendant.

On February 9, 2023, the Plaintiff with regard to its prayer seeking declaration of its mark “” as well-known, made submissions with respect to each of the five factors enumerated in Section 11(6) of the Act for determining a trade mark as a well-known trade mark.

SUBMISSIONS OF THE PLAINTIFF

The Plaintiff provided cogent documentary evidence to substantiate that the criterion outlined in Section 11(6) read with Section 11(7) of the Act for a well-known trademark is met.

Factor 1: The knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark.

The Plaintiff, with regard to factor 1, submitted that it has stores in Mumbai and Delhi wherein its products bearing the stylized 'H' logo are displayed. The Plaintiff mentioned retail distributions and revenue generated in its activity report for the year 2021. Further, it was submitted that several articles and magazines have reviewed and recognised the Plaintiff’s sandals bearing the mark “”.

Factor 2: The duration, extent and geographical area of any use of that trade mark.

It was submitted that the Plaintiff’s Oran sandals bearing the mark “” were conceptualised in the year 1997 and has been circulated in the market ever since. The Plaintiff owns a variety of footwear bearing the mark “”. Further, various documents were placed on record evidencing advertisements and promotion of the products bearing the Plaintiff’s mark in India.

Factor 3: The duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibitions of the goods or services to which the trade mark applies.

It was asserted that the plaintiff has engaged in extensive promotional activities since 1997. The Plaintiff's Oran sandals have been advertised on its website as well as in several international magazines, newspapers, and other media outlets. The product catalogues since 1997 were placed on record.

Factor 4: The duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent that they reflect the use or recognition of the trade mark.

It was submitted that the Plaintiff has secured international registrations and/or national registrations, in over ninety-three countries, such as the United Arab Emirates, France, Canada, Switzerland, Singapore, Australia, etc., including India.

Factor 5: The record of successful enforcement of the rights in that trade mark, in particular the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record.

The Plaintiff submitted that it has been vigilant in protecting and safeguarding its trade mark rights from misuse by third parties. Injunction orders granted by the German Courts in favour of the Plaintiff and undertakings given by third parties were placed on record.

Pertinently, it was asserted by the Plaintiff that knowledge or recognition of the trade mark is required to be assessed vis-à-vis the relevant section of the public. Accordingly it was submitted that, in a case where goods in question are intended to cater to a specific section of the public, the knowledge or recognition of the trade mark for the purpose of Section 11(6)(i) and 11(7) has to be vis-à-vis that section of the public. In light thereof, the Plaintiff submitted that the material placed on record indicates that the criteria enumerated in Clauses (i) to (v) of Section 11(6) are satisfied with respect to the renown of the mark in the fashion industry, the mark, therefore, is entitled to be certified as a well-known trade mark.

FINDINGS OF THE COURT

The Hon’ble High Court considered the material cited by the Plaintiff to support the plea for declaration of its mark “” as a well-known trade mark. Further, considering the volume and nature of material placed on record by the Plaintiff, the Court held that “the criteria enumerated in section 11(6) of the Trade Marks Act, read with Section 11(7), stand satisfied in the present case, so as to justify declaration of the mark as a well-known trade mark within the meaning of Section 2(1)(zg) of the Trade Marks Act 1999.”

CONCLUSION

The decision of the Delhi High Court is significant as it not only recognised stylized 'H' logo of French luxury brand Hermes International as a well-known trademark but also shed some light on the scope of the ‘relevant section of the public’ within the ambit of Sections 11(6)(i) and 11(7) of the Act. Further, the declaration of the Plaintiff’s mark as a well-known mark indicates the testamentary approach of the Indian Courts in recognising and protecting notable marks.