To understand the decision and the case well we need to grasp the fundamentals and basics of the trademark. So according to the WIPO trademark is a sign which is capable of distinguishing the products and services in a relevant market for the consumers and it is protected by Intellectual property rights. In India, trademarks are governed and regulated by the Trade Marks Act, of 1999 this act was specially introduced to comply with the TRIPS agreement and provisions laid down there forth.
A recent Delhi High Court decision on the issue of trademark attracted a vast amount of people on the issue, and therefore for this, it is very crucial for us to understand Hermes International & ANR. V. Crimzon Fashion Accessories Private Limited case to understand the recent development that took place in the trademark law.
What is a Trademark?
In layman’s language, a trademark can be termed as a source identifier as it helps in identifying the source of goods and services as well as distinguishes the goods of one seller from that of another. A mark can be Generic, descriptive, suggestive, arbitrary, or fanciful. The first two are said to be while the other three are termed as inherently distinctive and have high chances of getting registered. The attribute of being able to identify the source of products or services is known as “distinctiveness,” and a mark must be distinctive in order to be used as a trademark.
The Trademarks Act, 1999, defines a well-known trademark as, “a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services”.
Hermes International & ANR. V. Crimzon Fashion Accessories Private Limited: Case Analysis
In this case, the plaintiff Hermes International filed a suit against Crimzon Fashion Accessories Private Limited for violation of the mark which is of Hermes and the defendant Crimzon is using it for its luxury footwear.
The argument put forth by the plaintiff Hermes was that trademark of the plaintiff Hermes is well recognized by the relevant section of the public as they have stores in Mumbai and Delhi displaying the trademark H. and also several well-known magazines such as vogue have reviewed and recognized the plaintiff’s sandals with H trademark.
The plaintiffs also contended and argued that they coined the trademark H in the year 1997 by Mr. Pierre Hardy who is the creative director of the plaintiff company and he is also a well-known French designer. The plaintiff company used the trademark H in their Oran sandals and this was inspired by the house decoration of Africa’s Ndebele tribe and the sandals which were characterized by the leather band with the iconic H cut-out representing the plaintiff’s fashion house.
The plaintiff also argued that they have this trademark on several products and their trademark H is there since 1997 in the market. And plaintiff advertises this trademark through their stores displaying its trademark H.
The plaintiff further argued that they have registered the trademark H in 2015 in France and subsequent to that the trademark was granted international registration in 2016. The plaintiff put forth that all abovementioned clearly indicates that the trademark H was well-known in the fashion industry and also among the relevant section of the public and satisfies the conditions specified in Section 11(6) read with Section 11(7) of the Trade Marks Act, 1999.
The Delhi High court held that the trademark of Hermes is a well-known trademark under Section 2(z)(g) under the Trade Marks Act 1999 and it also satisfies the conditions mention in Section 11(6) and 11(7) of the Trade Marks Act 1999.
For our further understanding, we need to look at Section 2(z)(g) of the Trade Marks Act 1999 and what it means by the term well-known. In contrast to all other trademarks, which have their goodwill and reputation confined to a certain specified geographic region and to a specific range of commodities, well-known trademarks have both of these protected across the nation and across categories of goods and services. By law, the Trade Mark Registry is not allowed to register any mark as a trademark if it is confusingly similar to another well-known brand.
For instance, only Alphabet Inc. is permitted to register the name “Google” for any kind of good or service since it has registered Google as a famous trademark. Even though the service is unrelated to the Internet sector, only Alphabet Inc. is permitted to register “Google” as a trademark.
Any trademark that lacks distinctive characteristics or that only consists of signs or identification that may be used in commerce to assign some kind, quality, volume, intended use, value, place of origin, or time of manufacturing of goods, or that has developed a custom in the current lingo or in the genuine and established practices of the trade, may be disqualified from serving as a trademark.
This case clearly lay downs the importance of Section 11(6) and Section 11(7) while determining the well-known trademark of the product or service. Section 11(6) is especially important as it lays down the factors and conditions while determining the well-known trademark as gives five sub-clauses that would be helpful while determining the trademark. In this case, the counsel for the plaintiff mainly relied on Section 11(6) read with Section 11(7) of the Trade Marks Act 1999 while establishing that the Hermes trademark H is well-known in a relevant Section of the public.
Due to globalization, there has been an increase in trade and commerce throughout the world and this has led to growth in various industries due to an increase in consumption. The goods and services of one region is been consumed throughout the world and all these goods and service have distinguishable signs through which the consumer and public at large recognizes the product or service. The trademark is an exclusive right means everyone is excluded from using that except the holder of that right.
In the recent case, Hermes International & ANR. V. Crimzon Fashion Accessories Private Limited clearly illustrates the importance of a trademark and its effective implementation of it. This case tells us the relevance and the conditions put forward by the Trade Marks Act and how can a product be recognized as a well-known product under Section 2(z)(g) and also explains the conditions laid down in Section 11(6) and 11(7) of the Trade Marks Act 1999.
- Delhi High Court Declares Hermes International’s ‘H’ Mark As Well-Known Trademark; available at: https://www.livelaw.in/news-updates/delhi-high-court-hermes-international-well-known-trademark-221628, (last visited on 20 February 2023).
- Section 2 (1) (zg), The Trademarks Act, 1999.
- India: Trademarks Comparative Guide; available at: https://www.mondaq.com/india/intellectual-property/788896/trademarks-comparative-guide, (last visited on 20 February 2023).
- The Trade Marks Act, 1999.
- Well-Known Trademarks; available at: https://ssrana.in/ip-laws/trademarks-in-india/well-known-trademarks-india/, (last visited on 20 February 2023).