In a trademark infringement suit filed by Hermes International, one of the prayers by HERMES is that the mark of Hermes is declared as a well-known trademark within the meaning of Section 2(1)(zg) 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 as mentioned under Section 11(6) of The Trade Marks Act, 1999.

  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.
  2. The duration, extent and geographical area of any use of that trademark.
  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.
  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;
  5. The record of successful enforcement of the rights in that trademark; 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.

Counsel on behalf of Hermes submitted that all the above-mentioned factors as laid down in Section 11(6) was adduced by Hermes with respect to the documents as listed below:

  1. The 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 trademark was coined in the year 1997 and ever since then has been in continuous use with several events conducted in India where the products bearing the mark were showcased. several celebrities have also been using the products bearing the trademark.
  3. Hermes, since 1997 has been promoting the products bearing the trademark extensively including international magazines, websites & publications, published product catalogues, in-store advertising etc.
  4. Hermes 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. Hermes has been active in protecting & enforcing its rights against third parties including obtaining injunction orders before the German courts & obtaining undertakings from third parties.

It is also pertinent to note that Hermes submitted that the “relevant section of the public” to which Sections 11(6)(i) and 11(7) of the Trade Marks Act 1999 refers should be assessed vis-à-vis the relevant section of the public where goods in question are intended to cater. i.e. the fashion industry in this case.

The Court was convinced that the five factors required under the law and knowledge among the relevant sections of the public are satisfied, and accordingly accorded the H device mark, the status of a well-known trademark under Section 2(1)(zg) of the Trade Marks Act 1999.