Fashion house Christian Dior Couture (“Dior“) filed in 2021 to the EU Intellectual Property Office (“EUIPO“) an application for registration of 3D shape of bag of this designer house – so-called Saddle bag as trademark within class 9 (mainly referring to eyeglass and phone cases) and class 18 (various handbags). EUIPO partly refused the application stating that the form of the bag lacked distinctiveness and that this bag is practically one of many in the world market.
Saddle bag phenomenon
Saddle bag was designed in 1999 by John Galliano for Dior’s 2000 spring collection and it has recently been reintroduced into the world market in various shapes and colours. Over the years, this bag was a choice of many world celebrities and the recognisable shape of this bag found its place on the covers of many magazines, however the EUIPO found that references of this type were not a sufficient parameter for registration of 3D shape of a bag as trademark.
First instance procedure
In the first instance, EUIPO partly refused the application of this designer house stating that the shape of Dior’s Saddle bag is typical for the type of goods that its registration is applied for and that the result of such typicity is lack of distinctiveness, which represents one of the conditions for trademark registration. The stated authority further argued its position stating that consumers would not rely on the shape of such product as an indicator during purchase, as they would rather rely on the shape of product in combination with other factors such as words or logos – in this case Dior’s name.
Given the lack of distinctiveness of the product, the shape of the Saddle bag is, according to EUIPO, a mere variant of other forms of handbags available at the market and, although this shape of bag has functional purpose in terms of objects storage, it cannot represent a distinctive mark.
Action upon Dior’s appeal
Dissatisfied with the refusal, Dior appealed to EUIPO’s Board of Appeal referring to successful registration of 3D shape of lipstick case by cosmetic brand Guerlain in 2021, and presented, among other, the following argumentation:
the examiner inaccurately understood the nature and category of target consumers – Dior claimed that consumers in the world of luxurious fashion are more discerning than other consumers and that they will “show high or above average level of attention”;
the handbag shape differs from other luxurious designer products in class 9 and 18 that are sold by other luxurious fashion companies, referring to below listed bags designed by Chanel, Louis Vuitton and Hermes;
the shape of the bag resembling a horse saddle had not been used in the market of luxurious handbags before designer John Galliano.
Nevertheless, even the above statements of Dior that found their place in the appeal did not convince the Appeal Board of EUIPO to revert their decision and fully accept the application for trademark registration. They stated that mere departure from the norm is not sufficient for a mark to be considered distinctive; only the marks that “significantly” depart from the norms for certain type of products in the field of fashion accessories can be registered according to the provisions of the EU Trade Mark Regulation – EUTMR.
Trend of product shape protection as trademark
The fact that “Dior case” attracted attention of consumers and designers in the fashion world, both owing to distinctiveness and popularity of Saddle bag among consumers and due to other possible procedures that may be instituted by Dior’s competitors for protection of 3D shape of handbag as a trademark.
Companies that manufacture consumer goods in the fashion world have been attempting for long to register unusual trademarks relating to their products, however EUIPO usually rejected this type of trademark applications, e.g. protection of Moon Boot shape (Tecnica Group), Damier Azur pattern (fashion company LVMH), sole pattern of Birkenstock products and the position of mark on Buffalo Boots.
When we noted that Dior’s application was partly rejected in this procedure, we meant to say that the protection of 3D shape of Saddle bag as trademark was successful in class 9 that refers to glasses and phone cases, while it was lacking even after the second appeal to the Board of Appeal of EUIPO for protection in class 18 that refers to different types of handbags.
Notwithstanding the public opinion on this matter, it is questionable whether Dior would have been more successful in registration of 3D shape as trademark had it added, prior to application, some elements in 3D shape that are Dior-specific and that are already on the Saddle bags that are being sold, such as strips, initials or logos, particularly considering the approval of application filed by fashion company Pierre Balmain S.A for registration of 3D shape of bag as trademark, but which shape, unlike the 3D shape of the Saddle bag, has a specific letter B imprinted on the front of the bag.
By Sara Necic, Senior Associate, PR Legal