Three-dimensional trademarks, iconic does not mean distinctive. The registration of Dior's “Saddle Bag” has been denied (for now)

By decision of 7 September 2022, the 2nd EUIPO Board of Appeal confirmed the partial refusal to register the three-dimensional trademark no. 018435556, applied for by Christian Dior Couture (“Dior”) and refused by the examiner.

The trademark application concerned the shape of Dior’s well-known “Saddle Bag”, which the company applied to register as a three-dimensional mark for various goods in Classes 9 (“Spectacles, sunglasses, sports spectacles; spectacle frames; spectacle cases; protective cases, bags and covers for computers, tablets, mobile phones and MP3 players; phone cases; phone covers; spectacle chains”) and 18 (“Leather and imitation leather; skins and furs of animals; trunks and suitcases; wallets; purses; leather or imitation leather briefcases; travelling bags for clothing; leather or imitation leather key cases; backpacks; travel bags; toiletry cases, leather boxes; umbrellas; leather shoulder bags; handbags, purses, pouches (leather articles), travel bags (leather articles), toiletry and make-up bags (empty)”).

In her decision of 11 November 2021, the EUIPO examiner refused registration on the grounds that the shape at issue would be considered common in relation to the goods in Classes 9 and 18 and, consequently, devoid of distinctive character. In particular, the Office pointed out that in the relevant goods sector, consumers would tend not to rely on the shape of the goods alone in order to identify their origin, but rather on the shape in combination with other elements, such as words and/or accompanying logos: in the absence of such additional elements, the shape of the “Saddle Bag” alone would be considered a mere variant of the many shapes available on the market, devoid of distinctive character and incapable of identifying the origin of the product.

Appealing against this decision, Dior claimed that:

       i.          in the present case, the consumer would be a particularly discerning individual with regards to his/her purchase, accustomed to dealing with luxurious and expensive products and a specific product sector such as haute couture, and would therefore be able to identify the origin of Dior’s product by its shape alone;

      ii.          the application for registration concerned a shape completely different from those available in the relevant sector, resembling a riding saddle and thus departing from the industry standard (as required by T-488/20, Guerlain v. EUIPO), and having become, inter alia, immediately identifiable by the relevant public;

    iii.          the mark applied for is also clearly distinguishable from the shapes marketed by other luxury brands in relation to the contested goods in Classes 9 and 18.

Nevertheless, the Board of Appeal upheld the examiner's decision, reaffirming how, according to the EUIPO’s consistent and long-standing case-law, on the one hand, the criteria for assessing the distinctive character of three-dimensional trademarks consisting of the appearance of the product itself are no different from those applicable to other categories of trademarks. On the other hand, however, as mentioned above, the average consumer would not normally be accustomed to presume the origin of goods on the basis of their shape in the absence of graphic or textual elements. In light of this, it would be necessary for the mark, subject to registration, to deviate significantly from the industry standard in order to perform its essential function as an indicator of origin, which would not be the case with the shape of Dior’s “Saddle Bag”.

In response to Dior’s objections, the Commission pointed out that the goods at issue fall within a particularly wide price range, as well as within several possible marketing channels (including supermarkets): they would therefore be purchased by the general public, with an average level of attention, and not by a professional public, with an above-average level of attention. Moreover, the Commission states, even assuming that the public had an above-average level of attention, this could not have a decisive influence on the legal criteria used to assess the distinctiveness of a mark.

Concerning the shape to be registered, the Commission took the view that the registration applied for consisted of a combination of typical elements and presentation - therefore incapable of performing the function of an indicator of origin - of part of the goods in Class 18 - specifically “handbags, purses, pouches (leather goods), travel bags (leather goods), toiletry and make-up bags (empty)”. The Commission thus refused registration for those goods, allowing it instead for the remaining Class 18 goods and Class 9 goods.

However, as Dior had also claimed in its application that the mark had acquired distinctiveness through use by the company (so-called “secondary meaning”), the Commission concluded by returning this question to the competent examiner.

Therefore, even if, for the EUIPO, the shape of Dior’s “Saddle Bag” does not deviate sufficiently from the industry standard to have original distinctiveness, it now remains to be seen whether it will be recognised as having acquired distinctiveness and whether it can be registered as a trademark on that basis.