It has been reported in the news that a company located in Kyoto City was arrested for possessing a bag resembling the “Birkin” bag by French luxury brand Hermès in a store in the city with the intent of selling it. The trademark owner, Hermès International, owns a registered trademark depicting the three-dimensional shape of the “Birkin,” and the executive was arrested and referred to prosecutors on suspicion of trademark infringement.
Under the Trademark Act, one form of trademark use, “the act of affixing a mark to goods or their packaging” (Article 2, Paragraph 3, Item 1), includes cases where the shape of the goods themselves is used as the mark (Article 2, Paragraph 4).
<Quoted from J-Plat Pat> Reg. TM No. 5438059
If a three-dimensional trademark representing the shape of a handbag were applied for under Class 18, designating “handbags,” it would typically be rejected as a trademark consisting solely of a mark commonly used to indicate the quality of a product (Article 3, Paragraph 1, Item 3). The above registered trademark was also rejected during the examination process for lack of distinctiveness. However, in the appeal against the final refusal, it was found to fall under the category of a mark that, through use, has acquired the ability to distinguish between one’s own goods and those of others, and Article 3, Paragraph 2 was recognized, leading to registration.
The above registration example is one in which the shape of the product “handbag” itself (without any other letters or figures) was recognized as functioning as a mark that identifies the source of the product, making it an extremely valid and powerful right.