The recent Delhi High Court ruling by Justice Tejas Karia in Hermes International & Anr. vs Macky Lifestyle Private Limited & Anr (Cs(Comm) 716/2021 & I.A. 17569/2021) granting well-known trademark status to the 3D shape of Birkin bags marks a significant development in Indian trademark law. While several word marks and logos in India already enjoy well-known protection, this judgement reaffirms that a product’s shape alone, even without the brand name or logo, can act as source identifiers and earn the highest degree of trademark protection.

Brand owners generally obtain protection for aesthetic features of their products under the Design Act, however, obtaining protection as a shape mark under the Trade Marks law (when it acts as a source identifier) awards indefinite protection (renewable every 10 years) and significantly strengthens brand protection. Particularly, shape marks offer effective solutions against counterfeits, stopping others from using a confusingly similar shape even if the infringer claims their product is ‘inspired by’ yours or has minor variations.

Does your brand qualify for a shape mark/3D mark protection under the trademark law?

  • Distinctiveness – The shape must be distinctive and must be distinguishable from other products in its category.
  • Act as a Source identifier – Consumers should be able to identify and associate the product with your company and brand based on the shape alone.
  • Shape should not be purely functional/to obtain a technical result – The shape cannot be as a result of the product’s function.
  • Shape must not arise from the nature of the goods or services offered – A shape that is common or generic for the nature of products cannot be registered.
  • Shape should not add substantial value – To avoid monopoly, the shape of your product cannot add substantial value to the goods offered.

Can you obtain well-known status for your shape mark? This is what you need!

  • Prove extent of knowledge/recognition of your shape mark through documents evidencing your retail presence, distributions, e-commerce listings & sales, sales revenue, media publications, customer reviews etc.
  • Show the duration and extent of extensive use of your shape mark through proof of adoption of the mark, the earliest global or Indian trademark application for the shape, among others.
  • Show the robust promotions undertaken for the shape mark including advertisements, product showcases, exhibitions, trade fairs, online promotions, global visibility, etc.
  • Evidence the registrations and IP protections obtained globally and in India for the shape mark.
  • Records of successful enforcement actions in India and across the world including cease & desist notices sent, oppositions, cancellations, court actions, customs enforcement, takedown requests with social media platforms, etc.

All these helps you establish that your distinctive shape has acquired high reputation and recognition among the public and is capable of identifying the origin even without the logo or brand. The Birkin judgment has opened the door for brands especially in luxury, fashion, beauty, consumer electronics, and lifestyle industry to protect the iconic shapes of their products.

If your product’s shape is distinctive, widely recognised through its shape or commonly copied, this is the best time to secure 3D/shape protection and consider applying for well-known status. We would be happy to do a quick assessment of your rights, feel free to reach out to us!

Written by Keerthana K