31/10/2022
3D shape trade marks continue to be rejected at the European Intellectual Property Office (EUIPO).
In the battle against counterfeits and copy-cats, a trade mark registration has to be a valuable acquisition. But it may be a challenge and Dior are the latest to struggle. In the recent decision: R 32/2022-2, the Appeal Board of the EUIPO upheld (in-part) the Examiner’s rejection of Dior’s trade mark application to register the shape of its Saddle Bag for certain goods, including handbags.
Background
The Saddle Bag was first designed by John Galliano in 1999. It has recently been reintroduced and has been crowned a ‘decade-defying IT bag’ by Vogue magazine. The bags retail for several thousand pounds.
First application
In March 2021, Christian Dior Couture attempted to register a 3D mark (shown above left) to cover goods in class 18 – handbags and class 9 – eyeglasses cases. They added a description of the mark: ‘consisting of the three-dimensional product design of a bag with a curved and sloping base, and a single flap with curved contours covering the opening of the bag.’ The EUIPO refused the application for goods in both class 18 and class 9. They held that the mark did not ‘significantly depart from the norm or customs of the sector,’ and therefore lacked distinctiveness. Additionally, the Examiner held that the shape of the Saddle Bag has a possible functional element and would be perceived as a ‘practical shape for storing objects,’ further diminishing Dior’s claim that the shape is a distinctive trade mark.
Dior appealed this decision, claiming that their products are ‘luxurious goods’ and that their consumers would show a ‘high or above average level of attention’ (more than the ‘average’ consumer) when deciding what to purchase. The nature of the consumer purchasing bags of that price point would, Dior argued, be able to distinguish the Saddle Bag from Chanel’s newest purse, for example. To that effect, Dior included, as evidence, photos of two luxury bags. They argued that upon comparing these examples to their never-been-done-before riding saddle shape, their mark ‘clearly diverges from the norm’ and is therefore distinctive in the leather goods sector. Regarding their eyeglass cases, for which Dior also looked to register its 3D mark, it was argued that their mark was ‘memorable and immediately identifiable as coming from the house of Christian Dior Couture and therefore inherently distinctive’ in the eyeglass case sector.
The Appeal Decision
All the aforementioned submissions did not entirely convince The Board of Appeal. In their decision, given on September 7th 2022, they upheld the initial refusal from the EUIPO examiner in relation to class 18 handbags.
The Board rejected Dior’s submission that their consumers held a higher level of attention than the average consumer. The Board stated that the goods in question can be priced very differently. This widens the pool of relevant consumers beyond the niche category of ‘above average attention’ consumers Dior put forward.
The Board also held that ‘average consumers are not accustomed to presuming the origin of products based on their shape, in the absence of any graphic or textual element.’ As we see often, it therefore follows that only a mark which differs significantly from the norms of the industry would be held to be sufficiently distinctive to register as a trade mark. Although Dior presented photos of other luxury bags in the sector as evidence that their riding saddle shape differed from the norm, the Board reiterated that a ‘mere departure from the norm’ is not sufficient; there needs to be a significant difference between the sign applied for and customs of the sector. The Board found that a significant difference was not present between the shape of the Saddle Bag and the customs in the leather handbag sector, upholding the first instance refusal for registration of the mark.
This finding applied only to some goods of the application. The Board upheld the first instance refusal for registration of the mark for the class 18 goods – handbags, pouches, travel kits, toiletry, and make-up cases. However, Dior’s application did succeed for class 9 – eyeglasses, spectacle cases etc; seemingly Dior’s argument of inherent distinctiveness of their mark in the eyeglasses sector convinced the Board to overturn the first instance refusal, and allow registration of their mark for these class 9 goods.
Comment
This decision adds to a long list of 3D shape marks , of fashion & beauty houses, being deemed non distinctive, or otherwise unregistrable, in Europe, including Tecnica’s Moon Boot (shown below left). The struggle to register shape marks persists and with the Dior Saddle Bag shape deemed not distinctive enough to significantly depart from the norms of the sector, it follows that very few shapes will be.
Contrastingly, there are instances of the EUIPO accepting 3D marks for class 18 goods if there is another element in the mark. For example, Pierre Balmain S.A holds a 3D shape mark registration (EUTM 018407551, shown below right) which is in the shape of a bag but also features the Balmain B embossed at the front. It appears likely that Balmain’s B in combination with the 3D shape of the bag aided registration of the mark.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
