Hermès iconic “BIRKIN” handbag granted protection by the Delhi High Court
Introduction
Recently in the case of Hermes International & Anr. v. Macky Lifestyle Private Limited & Anr., the Delhi High Court granted an ex parte ad interim injunction in favour of the Plaintiff restraining the Defendant from infringing the three-dimensional shape trademark of the Plaintiff’s iconic luxury “Birkin” handbag, the word and device mark “HERMES” and the copyright in the artistic work in the device mark “HERMÈS”.
The Claim
The Plaintiff, a well-known luxury handbags and accessories manufacturer claimed infringement of the three-dimensional shape trademark of their “Birkin” bags, “HERMES'' word and device marks and the copyright in the artistic work in the device marks “HERMÈS”. They alleged that in late September 2021, they had come to know that the Defendant had approached one of their suppliers through email, sourcing materials to manufacture “Kelly'' and “Birkin” bags. Upon investigation, the Plaintiff discovered a manufacturing and distributing network where the impugned products i.e. “Premium Leather Bags Birking Bag'' were being sold through the Defendant’s own website https://mackyleatherco.business.site/-. Interestingly, the Defendant named the impugned products “BIRKING” which is confusingly similar to the Plaintiff’s trademark “BIRKIN”. The Plaintiffs also discovered that the Defendants were portraying themselves to be manufacturers and although the website did not have any listings, it allowed any prospective buyer/customer to place queries and quotes. Furthermore, the Plaintiff also discovered that the impugned products were being sold on other online platforms including IndiaMart and Facebook.
In light of these revelations, the Plaintiff claimed that the Defendants were attempting to create an unauthorised association with the Plaintiff’s products and were also tagging customers to deceive them into believing that they had launched an affordable new range of “Birkin” handbags. Thus, they claimed infringement of their registered trademarks and copyrights, passing off, dilution, tarnishment, rendition of accounts, damages, delivery up, unfair competition, misappropriation etc. against the Defendants. It is worth noting that the Plaintiff also claimed statutory and common law rights owing to its transborder goodwill and reputation that it has earned over the years.
The Decision
The Court noted that the “Birkin” handbag is “characterised by its unique shape, pattern, and contouring, which is widely recognized throughout the world including in India.”
Finding in favour of the Plaintiff, the Court stated that they have a prima facie case and the balance of convenience also lies in their favour. Accordingly, the Court restrained the Defendants from using, manufacturing or advertising on their website and/or on any other third-party websites the infringing products i.e., “the "Birkin" Bags with/ without the Hermes trademarks on their own which are identical, deceptively or confusingly similar to the registered suit trademarks of the Plaintiff.” The Court further restrained the Defendant from using the marks for “any goods and services in relation to bags, wallets, clutches or any leather related goods or use the said suit trademarks in any manner whatsoever leading to infringement of Plaintiffs' suit trademarks; or so as to cause confusion or deception leading to passing off of the Plaintiffs' suit trademarks.”
Conclusion
This decision highlights the importance of trademark and copyright protection in the fashion industry. Counterfeiting is a matter of major concern for any brand owner and it has become most common in the luxury handbags and accessories industry. The willingness of the courts to penalize such infringement is an essential tool towards protecting the intellectual property rights of legitimate brand owners. The fact that the Court in this case also granted protection to the three-dimensional shape trademark of the Plaintiff shows that such unique or non-conventional trademarks are gaining momentum and shall also be granted equal protection.
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