On January 6, 2009, Beijing No.1 Intermediate People's Court made the decision that HERMES ITALIE S.P.A., who was dissatisfied with the decision made by the Trademark Review and Adjudication Board (TRAB) on refusal of the three-dimensional trademarks "Birkin Bag" and "Kelly Bag", lost in the action of first instance.

HERMES ITALIE S.P.A. filed the application for extension of No. 798099 and No. 798096 three-dimensional international trademarks "Birkin Bag" and "Kelly Bag" (The reproductions thereof are shown as follows.) registered in respect of "leather and imitation leather articles (excluding especially designed cases, gloves and belts), bags, such as handbag, travel bag, backpack" in Class 18 to China in accordance with the Madrid Agreement. The Trademark Office and the TRAB refused the trademarks on the grounds that they were devoid of distinctiveness. Dissatisfied with the decisions, HERMES ITALIE S.P.A. instituted administrative proceedings with Beijing No. 1 Intermediate People's Court.
Through hearing, the court holds the following view:

The three-dimensional international trademarks No. 798099 "Birkin Bag" and No. 798096 "Kelly Bag" are designated for bags. They mainly consist of the bag body, the flip on the body and the handle. In the three-dimensional reproductions, the dotted line represents the body outline and the handle while the solid line stands for the flip on the body. In hearing, HERMES ITALIE S.P.A. asked for protection on the flip featured with the dotted line as it is distinctive. But there is no provision in the Trademark Law and the Implementing Regulations of the Trademark Law on protection of a part of a three-dimensional trademark, thus the overall appearance of the trademarks shall be taken into consideration. In this case, the flip part in the two three-dimensional trademarks is distinctive in designing to some extent, but the designing demonstrates the functional features of the designated goods. On the whole, the two three-dimensional trademarks are devoid of the necessary distinctiveness and insufficient to enable the relevant public to distinguish the source of goods. In addition, the plaintiff fails to provide sufficient evidence to certify the distinctiveness acquired by the trademarks through long-term use in China. To sum up, Beijing No.1 Intermediate People's Court upholds the decision made by the TRAB on refusal of the two trademarks.

Comments and analysis:

According to the definition made by the "Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications" of WIPO, a position trademark shall be deemed as one of non-traditional trademarks. The application for registration of such trademarks shall contain a reproduction, which shall be clear and explicit enough to enable the examiner of the Trademark Office to verify the object to be protected. In such applications, the part that needs no protection shall be marked with the dotted line. If necessary, the position where the trademark is applied shall be illustrated. Now, position trademarks can be registered as a type of individual trademarks to receive protection in some European countries, such as Germany and France. The two internationally registered trademarks applied for by HERMES ITALIE S.P.A. are undoubtedly typical position trademarks. So far in China, a position trademark is not an individual type of trademarks to be protected. But as in many countries, position trademarks can still receive protection in China as planar figurative trademarks or three-dimensional marks.

It can not be denied that the flip represented by the solid line in the three-dimensional trademarks mentioned above are indeed the major components or the focus in designing. But, trademark designing and consumers' visual impression are all based on the overall appearance of the trademarks. As pointed out by the judge in the decision, there is no provision in the Trademark Law on protection of a part of a three-dimensional trademark. The overall appearance of the trademarks shall be taken into consideration. As a matter of fact, the main part, such as the flip, in the trademark applied for manifested as a handbag, can receive protection as a three-dimensional trademark. (For example, the applicant's internationally registered three-dimensional trademark No. 806207 "" has already been registered in respect of goods in Class 18 in China.) In application for registration of the overall designing of the handbag as a three dimensional trademark, the stress shall be laid on the visual effects obtained through overall observation and comprehensive judgment rather than the partial designing. Otherwise, the application does not correspond with the scope of goods as shown by the reproduction of the trademark applied for.

It is very interesting that the judge pointed out in the decision that "the flip part in the two three-dimensional trademarks is distinctive in designing to some extent and the designing demonstrates the functional features of the designated goods". But the judge did not go further to explain what these functional features are or whether they are technical or esthetical functional features. Therefore, no further analysis was made on the relations between the functional features and the distinctiveness of the trademarks.

It should be noted that the plaintiff has lodged an appeal with Beijing Superior People's Court. Further comments on the functional features in the court's final decision are expected.