Hermès beat Birkin Bag Imitator for Trademark Infringement

On December 17, 2020, the Japan IP High Court upheld awards for JPY2,900,000 for damages suffered by Hermès in relation to a trademark infringement and passing-off case regarding the Birkin Bag imitations.
[Court case no. Reiwa2(Ne)10040]

Hermès Birkin Bag

HERMES INTERNATIONAL, a French luxury fashion house, has owned Japanese trademark registration no. 5438059 for the 3D shape of the “Birkin” bag in connection with handbags of class 25 since 2011 by successfully demonstrating acquired secondary meaning as a specific source indicator of Hermès’ luxury bags.

The iconic Birkin bag was firstly created for Jane Birkin in 1984. It is known for its superior craftsmanship and jaw-dropping price tag, with standard models starting around JPY1,000,000. Its annual sales figures exceed 3,000 in 1998, 8,000 in 2003, and 17,000 in 2009.

Birkin Bag Imitations

Hermes sued Kabushiki Kaisha Tia Maria at the Tokyo District Court for violating its trademark right and the unfair competition prevention law by allegedly promoting 100 or more Birkin look-alike bags (see below) in Japan with a price tag of JPY27,300 from August 2010 to February 2018.

Court decision

On June 3, 2020, the Tokyo District Court decided in favor of HERMES INTERNATIONAL and awarded damages for trademark infringement and passing-off in the amount of JPY2,900,000.
[court case no. Heisei31(wa)9997]

In the decision, the Tokyo District Court found that Hermès Birkin Bag has acquired distinctiveness and become remarkably famous as a source indicator of Hermès’ luxury bags by 2009.

Besides, the court held that defendant’s goods constitutes an infringement of the 3D shape of the “Birkin” bag trademark since both are confusingly similar in view of the following aspects:
(a) a distinctive three-lobed flap design with keyhole-shaped notches to fit around the base of the handle, (b) a dimpled triangular profile, (c) a closure which consists of two thin, horizontal straps designed to fit over the flap, with metal plates at their end that fit over a circular turn lock, (d) a padlock which fits through the center eye of the turn lock and (e), typically, a key fob affixed to a leather strap, one end of which is affixed to the bag by wrapping around the base of one end of the handle.

Screen capture of TIA MARIA’s website (http://tiamaria.zf.shopserve.jp/SHOP/V1172S.html)

The court measured damages to recover (i) defendant’s actual sales of infringing bags (JPY2,730,780) by subtracting appropriate variable cost (40% of the offered price) for JPY1,638,468, (ii) “mental suffering” caused by an infringement for JPY1,000,000, and (iii) reasonable attorney fee for JPY260,000.

The district court decision was challenged by the defendant before the High Court to set aside or vary it, however, the IP High Court dismissed the appeal entirely and sided with HERMES INTERNATIONAL.

To read a full text of the IP High Court decision (Japanese only), click here.

JPO protects 3D shape of cherry design bottle for soy sauce dispenser

In a recent administrative decision, the Japan Patent Office (JPO) found 3D shape of cherry design bottle is inherently distinctive in relation to soy sauce dispensers in class 21 even without secondary meaning.
[Appeal case no. 2019-7188, Gazette issue date: March 27, 2020]

3D shape of cherry design bottle

RISU Co., Ltd. filed a trademark application for three-dimensional shape of soy sauce bottle featuring cherry designs (see below) in relation to say sauce dispensers of class 21 on July 20, 2017 (TM Application no. 2017-96914).

From appearance, the 3D shape does not differentiate from an ordinary soy sauce dispenser except cherry designs in red encircling a clear cylindrical plastic bottle.

As a matter of fact, RISU Co., Ltd. has produced various plastic products for home use as well as cherry patterned table top condiment containers.

Article 3(1)(iii)

The JPO examiner rejected registration of the 3D mark on the ground that relevant consumers would not conceive the shape as a source indicator in relation to soy sauce dispensers since there exists similar goods depicting decorative patterns and colors to aim at attracting their attentions. The mark merely represents a shape of designated goods in a common manner and thus is not eligible for registration based on Article 3(1)(iii) of the Trademark Law.

Article 3(1)(iii) is a provision to prohibit any mark from registering where the mark solely consists of elements just to indicate, in a common manner, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, the method or time of production or use.

To dispute the refusal, applicant, applicant filed an appeal on June 3, 2019.

Appeal Board’s decision

The Appeal Board disaffirmed examiner’s rejection of the 3D shape by stating that:

Figurative elements depicted on a clear plastic cylindrical bottle would be rather perceived as a distinctive device created on a cherry motif, than a decoration for the purpose of enhancing function or aesthetic appeal of goods in question. If so, the 3D shape per se is deemed to play a role of source indicator sufficiently. It is obvious that examiner errored in finding distinctiveness of the 3D shape.

Thus, the 3D mark is eligible for registration in connection with soy sauce dispensers of class 21 even without finding secondary meaning because of inherent distinctiveness of the shape.

Acquired distinctiveness for 3D shape of OMRON digital thermometer

The Japan Patent Office recently admitted trademark registration for a three-dimensional shape of digital thermometers ‘MC-670’ and ‘MC-681’ manufactured by Omron Healthcare Co., Ltd. by finding acquired distinctiveness in relation to thermometers (cl.10) under Article 3(2) of the Japan Trademark Law.
[Appeal case no. 2019-10386, Gazette issued date: October 29, 2019]

3D shape of the Omron digital thermometer

Omron Healthcare Co., Ltd. filed a trademark solely consisting of three-dimensional shape of its digital thermometers ‘MC-670’ and ‘MC-681’ (see below) in relation to thermometers in class 10 on August 28, 2018.
[TM application no. 2018-108289]

JPO examiner entirely rejected the application on the ground that in general pen-shape digital thermometers have a similar configuration with the applied mark. If so, it is unlikely that relevant consumers and traders conceive the shape as a source indicator of the goods. Hence, the mark is subject to Article 3(1)(iii) of the Trademark Law.

Article 3(1)(iii) is a provision to prohibit any mark from registering where the mark solely consists of elements just to indicate, in a common manner, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, the method or time of production or use.

To dispute the refusal, applicant, Omron filed an appeal on August 6, 2019.

Appeal Board’s decision – Acquired Distinctiveness

The Appeal Board affirmed examiner’s rejection of the 3D shape based on lack of distinctiveness. In the meantime, the Board granted protection of the 3D shape by finding acquired distinctiveness under Article 3(2).

Article 3(2) of the Trademark Law

Notwithstanding the preceding paragraph, a trademark that falls under any of items (iii) to (v) of the preceding paragraph may be registered if, as a result of the use of the trademark, consumers are able to recognize the goods or services as those pertaining to a business of a particular person.

Allegedly Omron has continuously used the 3D shape on its digital thermometers ‘MC-670’ and ‘MC-681’ since November 2004. Omron holds top-ranked market share (43.9%) of digital thermometers in Japan. ‘MC-670’ and ‘MC-681’ have been sold more than 4million sets over the last decade and maintains the 2nd market share (8.7%) in 2018.

The Board took a favorable view of the package design to appeal its 3D shape in an impression and conspicuous manner (see below), advertisements and award-winning.

According to the produced interview report, 60% of the interviewees (total of one thousand people who have digital thermometer or use it more than once a year ranging in age from 20 to 69) associated the shape with Omron or its digital thermometers.

Since Omron has been aggressive to stop competitors using resembled shape on their thermometers, the Board considered that the 3D shape is distinguishable to achieve its role as a source indicator consequently even if the “OMRON” mark is represented on the thermometers.

Based on the above findings, the Board held that the 3D shape would be conceived as a source indicator of Omron thermometers and thus registrable based on the acquired distinctiveness under Article 3(2).
[TM Registration no. 6197317]

JPO rejects 3D Shape Mark of Giant Cotton Candy

In a dispute of registrability to a unique three-dimensional shape of giant cotton candy, the Appeal Board of Japan Patent Office (JPO) refused protection of the 3D mark due to lack of distinctiveness.  
[Appeal case no. 2017-9666, Gazette issue date: September 27, 2019]

TOTTI CANDY FACTORY

If you ever visit Harajuku (Tokyo) chances are you will spot people carrying around gigantic pastel-colored cotton candy. When you think of cotton candy, a balloon-size blob of sticky blue or pink fluff probably comes to mind. But this cotton candy is here to rewrite any preconceptions you have about the treat, because not only does it come in the most beautiful shades of pastel you’ve ever seen, it’s also legitimately larger than your head. It’s so big, it’s actually hard to take a cute picture holding it — because it blocks your entire face with its pretty rainbow hues.

You can find this giant rainbow cotton candy at a sweet shop popular with young people in Harajuku, Totti Candy Factory.

3D shape of the cotton candy was applied for registration with JPO in respect of confectionery (class 30) on May 20, 2016. [TM application no. 2016-54840]

Registrability of 3D shape mark

The shape of a product can be an important element that generates value for a company. For this reason, the protection of three-dimensional forms is of commercial interest. Three-dimensional trademarks include the shape of a product or its packaging. Prior to 1996, there was no proper statutory provision that recognized three-dimensional shapes as trademarks. 1996 revision to the Trademark Law recognized 3D shape trademarks such as the shape of the packaging and specific product shapes. Now, a Trademark Registration can be attained for any distinctive three-dimensional shapes, that discern the goods or services of one business from those of other businesses, under the Japan Trademark law.

JPO Examination

JPO examiner entirely rejected the 3D shape mark by stating that:

“Appearance of the applied mark in color can be perceived merely as an ordinary three-dimensional shape of cotton candy. If so, the shape is deemed equivalent to a configuration solely consisting of the shape of goods in a common manner to the extent that relevant traders and/or consumers are unlikely to recognize the shape as a source indicator. Hence, the mark is subject to Article 3(1)(iii) of the Trademark Law. From the produced evidence, it is questionable whether the shape has acquired distinctiveness as a result of substantial use.”

Article 3(1)(iii) is a provision to prohibit any mark from registering where the mark solely consists of elements just to indicate, in a common manner, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, the method or time of production or use.

To dispute the refusal, applicant, an owner of Totti Candy Factory, filed an appeal on June 30, 2017.

Appeal Board’s decision

The Appeal Board affirmed examiner’s rejection of the 3D shape based on lack of distinctiveness. As grounds for rejection, Board cited following conical cotton candies in several colors distributed by third parties.

In addition, the Board negated acquired distinctiveness of the 3D shape by stating that:

  1. Allegedly applicant has used applied mark on cotton candy since February 2015, however, he failed to produce objective evidence of its first use.
  2. In general, cotton candy is consumed by individuals in a wide age range. If so, three brick-and-mortar shops at Harajuku (Tokyo), Shinsaibashi (Osaka), Nagoya PARCO (Aichi) are insufficient to demonstrate increased publicity among relevant consumers all over the country.
  3. According to the produced sales record, from the period of February 2015 through June 2017 applicant sold 370,302 pieces of Giant Rainbow Cotton Candy, amounting to 200 million JP-yen in total sales. However, its market share remains unclear.
  4. A fact that Totti Giant Cotton Candy has gotten popular with young women in their teens and early 20’s is insufficient to admit acquire distinctiveness of the 3D shape since consumers of cotton candy are not limited to young women.
  5. Advertisement and publications of Giant Rainbow Cotton Candy contains a term “TOTTI CANDY FACTORY” or “Totti” adjacent to the 3D shape. From these evidences, it is questionable whether relevant consumers would conceive the 3D shape in itself as a source indicator of Totti Candy Factory.

Based on the foregoing, the Board consequently refused to register the mark based on Article 3(1)(iii) of the Trademark Law.

Trademark registration for Tasaki’s Akoya pearls ring

In March 17, 2017, Japanese jewelry house TASAKI & Co., Ltd., the Japanese leading producer of Akoya pearls, filed an application for trademark registration at the Japan Patent Office (JPO) for the following three-dimensional mark for rings in class 14.

Signature ring featuring a row of five seemingly identical Akoya pearls

Applied mark represents a signature ring featuring a row of five seemingly identical Akoya pearls, one of Tasaki’s bestsellers.


Tasaki commenced sales of the ring in the name of “balancing signature ring” in April, 2010 and has been continuously promoting the sales since then.

 

JPO Examination/Acquired distinctiveness

The JPO examiner totally refused the mark due to a lack of inherent distinctiveness in relation to rings [jewelery].

Tasaki filed an appeal against the decision and argued acquired distinctiveness of the 3D configuration of the ring arising from uniqueness of its shape and substantial advertisement.

According to the filed evidences to the JPO, Tasaki installed a large signboard for advertisement at busy places, Ginza (Tokyo), Kobe, Osaka and made various promotional activities via internet, direct mails and events. The ring was appeared and published in magazines more than 130 times for the last eight years.

In March 1, 2019, the Appeal Board of JPO granted trademark registration based on Article 3(2) of the Trademark Law by finding acquired distinctiveness of the 3D configuration of the ring as a source indicator of Tasaki regardless of a fact that only 2,242 rings were purchased by consumers in fact .
[Appeal case no. 2018-9531, TM Registration No. 6125506]

Article 3(2) is a provision to allow registration of applied mark if, as a result of substantial use of the mark in fact, consumers are able to connect the mark with a source indicator of designated goods or services.

LUIS POULSEN Victory over trademark infringement lawsuit for Pendant Lamp Shade

On December 27, 2018, the Tokyo District Court sided with Luis Poulsen A/S, a Danish company, in a lawsuit for trademark infringement against R&M Japan Co., Ltd. who imported into Japan and sold lighting apparatus allegedly identical with or confusingly similar to a registered 3D mark in the shape of unique pendant lamp shade well-known for “PH5” and awarded damages of 4.4 million JPY. [Case no. Heisei 29(Wa)22543]

 

Luis Poulsen “PH-5”

Luis Poulsen A/S has manufactured and sold lighting apparatus with a unique lamp shape well-known for “PH-5” in Japan past four decades. The shape was successfully registered as a 3D mark by the JPO in 2016 as a result of demonstrating acquired distinctiveness of the shape as a source indicator in connection with goods of ramp shade in class 11 (see below) [Trademark registration no. 5825191].

 

Infringing product

R&M Japan, Defendant, imported into Japan and sold lighting apparatus which apparently looks identical with the shape of PH-5 (see below).

Defendant argued that the Court should dismiss the complaint in its entirely.

According to the court decision, defendant admitted to reproducing a design which has terminated its exclusive right after the lapse of statutory period and thus became public domain.

Defendant also disputed there happened no damages to plaintiff on the grounds that the company put consumers on notice to offer replica designer lighting or free generic design items in the marketplace. There exists a remarkable price gap between genuine PH-5 and defendant product. If so, claimed damages shall not be linked to defendant’s act.

 

Court decision

The Tokyo District Court ruled in favor of Luis Poulsen by stating that:

  1. It is unquestionable that infringing product constitutes trademark infringement given the same shape with registered 3D mark representing “PH-5” owned by plaintiff.
  2. Provided that the 3D shape of “PH-5” has been successfully registered as a trademark in Japan, expiration of design right shall not prevent the owner from enforcing trademark right against the shape once registered as design right.
  3. Even if infringing product was offered to sell on notice of replica designer lighting or free generic design items at a lower price than genuine PH-5, it shall not deny a fact that infringing product is likely to compete with plaintiff.

Based on the foregoing, the Court ruled that R&M Japan committed a trademark infringement and awarded Luis Poulsen 4.4 million JPYen for damages.

R&M Japan once challenged validity of trademark registration for the 3D mark of PH-5, but resulted in vain. click here.

IP High Court denied registering 3D Shape of Nursing Care Bed

The Japan IP High Court, in its ruling on November 29, 2018, did not side with Paramount Bed Co., Ltd., a Japanese manufacturer and distributor of medical and nursing care product, who filed an appeal against refusal decision by JPO to TM Application no. 2015-29155 for 3D mark representing the shape of home care bed.
[Case No. Heisei 30 (Gyo-ke) 10060]

 

3D shape of home care bed

Disputed mark, representing three-dimensional shape of nursing care bed, was filed on March 31, 2015 by designating nursing care bed and mattress in class 20. The Japan Patent Office (JPO) refused the mark due to a lack of distinctiveness.

Paramount Bed argued acquired distinctiveness as a source indicator of Paramount nursing care bed through substantial use of the mark and its unique shape.
According to the argument, Paramount has distributed more than 145,000 sets of nursing care bed and mattress which 3D shape is identical with the applied mark. The company spent USD 2,400,000 to advertise the bed in newspaper and USD 20,000,000 in TV commercial during the past five years. Paramount produced on-line questionnaire results which showed more than 60 % of relevant traders have recognized the shape as a series of Paramount Bed.

 

IP High Court ruling

The IP High Court dismissed the allegation entirely, stating that the produced evidences are unpersuasive to conclude the 3D shape acquired distinctiveness as a source indicator of Paramount Bed’s business because of below-mentioned reasons.

  1. As long as nursing care beds are likely to be used by general public, questionnaire results answered by traders are insufficient to demonstrate acquired distinctiveness among relevant consumers.
  2. Given the shape of applied mark occasionally appears while nursing care bed is in operation and the bed has coverlet on it in ordinary days, it is questionable whether relevant consumers have perceived the shape of applied mark per se as a source indicator.
  3. Besides, catalogs and advertisements pertinent to Paramount nursing care bed show configurations of the bed other than the shape of applied mark.

Based on the foregoing, the court upheld JPO decision.

JPO refused to register 3D shape of Mitsubishi Electric’s spiral escalator

The Appeal Board of Japan Patent Office (JPO) disallowed registration of 3D shape of Mitsubishi Electric’s spiral escalator due to lack of inherent distinctiveness and secondary meaning in relation to escalators, class 7. [Appeal case no. 2017-6855]

Spiral escalator

Mitsubishi Electric Corporation first developed the spiral escalator in 1985, and has been the world’s first and sole manufacturer of spiral escalators. Spiral escalator is a special design type of escalator in the form of a spiral/helical with curved steps.
On May 3, 2016, Mitsubishi Electric filed a trademark application for 3D shape of spiral escalator (see below) by designating escalators in class 7 to the JPO [TM application no. 2016-23374].

The JPO examiner totally refused the application based on Article 3(1)(iii) of the Japan Trademark Law stating that the applied mark can be easily seen as a 3D shape of escalator and the shape does solely consist of a common configuration to achieve the basic function of escalator. If so, the applied mark lacks distinctiveness as a source indicator.

To dispute the refusal, Mitsubishi Electric filed an appeal on May 12, 2017.

Appeal Board’s decision

The Appeal Board, however, upheld the examiner’s decision on the ground and dismissed Mitsubishi’s allegation by stating that relevant consumers and traders shall conceive of an escalator designed to enhance its function or sensuousness at the sight of applied mark.

Acquired distinctiveness

Mitsubishi Electric also argued that even if the applied mark is deemed descriptive in relation to escalators, it shall be registrable based on Article 3(2) due to acquired distinctiveness of the mark because Mitsubishi Electric Spiral Escalators has achieved 100 % market share in the world and continuously used the 3D shape on escalators for more than three decades.

Article 3(2) is a provision to allow registration of applied mark if, as a result of substantial use of the mark in fact, consumers are able to connect the mark with a source indicator of designated goods or services.

Under the totality of the circumstances, the Appeal Board dismissed the allegation as well.

The Board found that regardless of 100 % market share in the category of spiral escalators, Mitsubishi Electric’s domestic supply record of 24 units in the last thirty years shall be a trivial quantity in comparison with total number of escalators in operation. Besides, questionnaire result rather shows a source of the applied mark is unknown to more than 60% of the questionee.

Based on the foregoing, the Board questioned whether applied mark has acquired distinctiveness through actual use in relation to escalators and consequently refused to register the mark based on Article 3(1)(iii) and 3(2) of the Trademark Law.

Trademark registration for Kikkoman’s Soy sauce 3D Bottle

In October 11, 2016, Kikkoman Corporation, the world’s leading producer of soy sauce, filed an application for trademark registration at the Japan Patent Office (JPO) for the following three-dimensional colored mark for soy sauce in class 30.

Red-capped Kikkoman soy sauce dispenser

Iconic red-capped Kikkoman soy sauce dispenser was introduced in 1961 and has been in continuous production ever since. It was developed by Kenji Ekuan, a Japanese Navy sailor former naval academy student who dedicated his life to design when he left the service. Its unique shape took three years and over a hundred prototypes to perfect, but the teardrop design and dripless spout have become a staple of restaurant condiments all around the world. The bottle’s design hasn’t changed over the past 50 years.

JPO Examination/Acquired distinctiveness

The JPO examiner initially notified her refusal due to a lack of inherent distinctiveness in relation to say sauce.

In a response to the office action, Kikkoman argued acquired distinctiveness of the 3D bottle arising from uniqueness of its shape and substantial use for over five decades.

According to news release from Kikkoman, over 500 million of the bottles have been sold since the design was first introduced and distributed in approximately a hundred countries worldwide. Red-capped Kikkoman soy sauce dispenser has already been registered as 3D mark in US, EU, Ukraine, Norway, Russia, Australia.

In March 30, 2018, the JPO granted trademark registration based on Article 3(2) of the Trademark Law by finding acquired distinctiveness of the 3D color mark as a source indicator of Kikkoman.
[TM Registration No. 6031041]

 

It is just a 3D shape of electronic baccarat shoe, or trademark?

In a lawsuit disputing adequacy of decision by the JPO Appeal Board (Appeal case no. 2015-907) to refuse the applied 3D mark (TM2014-5943, class 28), consisting of a three-dimensional shape of electronic baccarat shoe with the program enabling to reduce the chance of foreign cards and eliminate dealer mistakes, due to lack of  distinctiveness and secondary meaning, the IP High Court sustained the decision being appealed.
[Case no. Heisei28(Gyo-ke)10266,  Decision date: September 27, 2017]

Inherent distinctiveness of the 3D shape

Plaintiff, a Japanese manufacturer and distributor of the ANGEL EYE electronic baccarat shoe, asserted that the 3D shape of ANGEL EYE, being the first products in the industry, is not an essential shape to make it free for public use since no competitors have dealt with same type of product other than plaintiff so far. Besides, a fact that the 3D shape has been registered in the legal gambling countries, e.g. US, EU, AU, RU, Malaysia and NZ, will rather bolster necessity to allow exclusive right on the shape.

However, the Court opposed to plaintiff. “It is inadequate to allow plaintiff to use the 3D shape exclusively. Applied 3D mark can be perceived objectively as a general shape of electronic baccarat shoe aimed to fulfill its original function and produce aesthetic image. If so, it may disorder a fair marketplace to allow exclusive use to plaintiff just because of a first-to-file. A mere fact of trademark registrations in countries where the ANGEL EYE has been distributed is insufficient to admit trademark registration in our nation since the goods is yet to be distributed in Japan.” Accordingly, the Court refused Applied 3D mark based on Article 3(1)(iii).

 

Secondary meaning of Applied 3D mark

Plaintiff argued Applied 3D mark has already served to function as a source indicator by means of substantial use of the mark sine 2005. Plaintiff exported 11,481 units (sale proceeds: 2.7 billion yen) over the lase decade and has achieved 90 % market share in Macau, the world’s largest casino gambling hub.

In this respect, the Court ruled in favor of the JPO. As plaintiff admits, the shoe has not been manufactured for domestic use. Any evidence suggesting a high degree of recognition to Applied 3D mark in foreign countries is neither relevant nor persuasive. Unless plaintiff demonstrates that domestic consumers have become aware of such recognition, it is groundless to find Applied 3D mark would satisfy requisite of secondary meaning based on Article 3(2) of the Japan Trademark Law.


The case raises a question: What is a role of the Trademark Law where applied mark, being registered in foreign nations,  confronts with an insuperable refusal attributable to legal restrictions on domestic use of the mark?
Unsuccessful domestic registration prevents domestic company from utilizing the Madrid Protocol and protecting his/her vital brands on the global market in an effective and economical manner.