Gerard Kelly: Dior is losing the appeal of its shape brand

Gerard Kelly, partner at Mason Hayes & Curran, reviews a recent decision by the EU Intellectual Property Office (EUIPO) regarding Dior’s saddle-shaped handbag.

EUIPO’s Second Board of Appeal recently ruled that Christian Dior’s iconic saddle-shaped handbag was not distinctive enough to be registered as a trademark for bags and/or handbags.

Despite Dior’s strong arguments that the shape of its bag is distinctive and deviates from normal industry standards, the Commission noted that bags, purses and purses come in a wide variety of shapes. Therefore, the board found that the shape of the Dior satchel was unlikely to be perceived by consumers as indicating origin.

Instead, the board held that consumers would rely on a number of factors such as the brand name and logo and that the shape mark was just a variation of the handbag shapes already available on the market. We examine the implications of this decision.

Background

The saddle-shaped Dior bag was designed in 1999 by John Galliano as part of the Dior spring 2000 ready-to-wear collection. Since then, it has been heavily promoted by celebrities and television personalities, including Jennifer Lawrence, Beyoncé and well-known fictional character Carrie Bradshaw from the TV show Sex and the City.

Last year, Dior applied to register the 3D shape below of the satchel as an EUTM for various Class 18 goods, including bags and wallets, as well as sunglasses and class 9 phone cases.

Gerard Kelly: Dior is losing the appeal of its shape brand

The EUTM application was partially rejected, the EUIPO examiner finding that the shape of the bag had a functional purpose for storing objects. The reviewer also stated that the shape of the bag did not deviate significantly from the norm. As such, it was unable to fulfill its original essential function and was devoid of any distinctive character.

Call

Dior appealed the examiner’s decision to the Second Board of Appeal of EUIPO. In doing so, it relied heavily on a similar case concerning a Guerlain lipstick product, in which Guerlain eventually succeeded in registering a 3D trademark for class 3 “lipsticks”. the EU General Court held that it was distinctive in the shape of the lipstick product which it said resembled that of a “boat hull” or a “stroller”.

In this case, Dior argued that, like Guerlain, its satchel is inherently or acquired distinctive because:

  • Consumers of luxury couture ready-to-wear show a higher degree of attention than the average consumer;
  • The brand looks like a riding saddle that had never been used in the fashion industry before Dior; and
  • The shape is different enough from other bags sold by luxury brands, citing the examples below designed by Chanel, Louis Vuitton and Hermès.
Gerard Kelly: Dior is losing the appeal of its shape brand

Decision

The Council rejected Dior’s arguments. Although it upheld Dior’s appeal regarding Class 9 goods and certain Class 18 goods, it refused trademark registration for “bags, handbags, pouches (leather goods), travel bags (leather goods)” and “toiletries and make-up – cases”.

With regard to shape marks such as the Dior messenger bag at issue, the board noted that only shapes which deviate significantly from the standards and practices of the sector will be considered to have the required level of distinctiveness. In addition:

  1. She rejected Dior’s arguments regarding the level of attention of the average consumer. She referred to the wide price range of the bags in question and the fact that there are a variety of marketing channels through which the bags are advertised and sold, including in supermarkets.
  2. She noted that the bags in issue are props. The accessories sector, he says, is characterized by a “multitude” and “abundance” of forms to which the public is already exposed.
  3. The mark applied for consists of a combination of elements of presentation typical of those types of goods and which do not deviate significantly from the standard in the leather goods sector, and
  4. The presence or absence of a shoulder strap or handles, the slightly different shape of the flap of the bag, the rectangular or rounded shape are not “meaningful” and immediately apparent to consumers.

Conclusion

While the decision is undoubtedly a setback for Dior, it is unlikely to be the end of the matter. The case has now been referred to EUIPO to determine Dior’s separate claim of distinctiveness acquired through use of the mark. In addition, Dior may decide to appeal the decision to the General Court of the EU.

More importantly, however, the case reminds trademark owners of the difficulties encountered in obtaining trademark registrations for unconventionally shaped marks. The decision of the EUIPO Management Board in this case clearly indicates that a simple deviation from the industry standard is not sufficient for a sign to be registered as a trademark. On the contrary, the difference between the sign and industry standards must be significant. In this context, trademark owners should be aware of the relevance of design protection for shape marks where trademark protection is not available. While a trademark registration provides a perpetual monopoly over the mark, a design registration, assuming the novelty grace period applies, provides up to 25 years of protection against copying and infringement. Alternatively, Community law on unregistered designs will last up to three years with proof of copy required.