EUIPO Board of Appeal holds (iconic) shape of Dior Saddle bag to lack distinctiveness for ... bags and handbags

Carrie Bradshaw
with the legendary Dior Saddle

If you were to indicate a handbag whose shape departs significantly from what is usual in this fashion segment, what would come to your mind? I, for once, would have little doubt and point to the shape of the iconic Dior Saddle bag.

Created by John Galliano in 1999 as part of Dior’s spring 2000 ready-to-wear collection, the Saddle was intended as “a handbag to mark a dawning age; how else were we expected to ride into the new millennium?”. 

Since then, it has become a fashion and pop culture symbol, with fictional characters (like Sex and the City’s Carrie Bradshaw) and actual celebrities sporting it. 

As Vogue correctly points out, “The bag’s defining feature was its shape, and Galliano had a ball swathing it in everything from an Oblique monogram colored in baby pink to Japanese-inspired floral embroideries. Soon after its introduction, the purse earned It bag status with recurring resurgences.”

To me, the Saddle's is a shape that is absolutely and clearly distinctive and could be registered as a trade mark.

Yet, it seems that I would be wrong.

Indeed, thanks to reports on LinkedIn, I found out that earlier this month the 2nd Board of Appeal of the EUIPO refused (R 32/2022-2; the decision is currently only available in French) to allow registration of the Saddle shape in relation to “Bags, handbags, pouches (leather goods), travel kits (leather goods), toiletry and make-up cases (empty)”. The Board held that that the test of ‘significant departure from the norm or customs of the sector’, which is required for less conventional signs, would not be satisfied here.

Let’s see what happened and how the Board did reason.

Background

In 2021, Christian Dior Couture applied to register the 3D sign below as an EU trade mark (EUTM) for various goods in classes 9 and 18:

The application was refused in part. The Examiner considered that the shape applied for would be regarded as “typical” in relation to the goods below and, as a result, would lack distinctiveness in relation to them:

• Class 9 - Spectacle cases, Phone cases;
• Class 18 - Leather and imitation leather; animal skins and furs; wallets; Wallet; card holders; Briefcases of leather or imitation leather; Leather or imitation leather key cases; Bags, handbags; Pouches (leather goods), travel cases (leather goods), toiletry and make-up cases (empty).

The Examiner deemed that in the reference sectors above consumers would not tend to rely on the shape of goods alone, but rather on the shape in combination with other elements, such as accompanying words and/or logos. Ultimately, Dior’s shape was considered a mere variant of the shapes available on the market.

Dior appealed. The Rapporteur noted that the identified bags below (?) would suggested that Dior’s shape would not diverge sufficiently from the norm and customs of the sector:

In turn, also referring to the recent Guerlain lipstick case application [IPKat here] for support, Dior noted that its sign would possess inherent (or, alternatively, acquired) distinctiveness because:

• The reference sector is haute couture and luxury ready-to-wear, which entails a higher degree of attentiveness on the side of the average consumer;
• The sign at issue reminds one of a riding saddle, which had never been used in the fashion sector before Dior, thus departing significantly from the norm and customs of the reference sector;
• An internet search shows that the Dior’s shape departs significantly from the shapes commercialized by other luxury brands in connection with the contested goods in classes 9 and 18.

Dior’s sign would not be just distinctive in the sense that it departs significantly from the norm and customs of the sector, but would be also memorable and immediately identifiable by the relevant public.

The decision

All the above did not convince the Board, which held the sign at issue devoid of distinctiveness, at least for some of the goods above.

The Board recalled that, in principle, the requirement of distinctiveness is the same for all types of marks. Nonetheless, when it comes to less conventional signs – as a shape is regarded to be – consumers do not tend to see them as indicators of commercial origin. As a result, only shapes that depart significantly from the norm and customs of the reference sector shall be regarded as possessing the required distinctiveness.

The Board further rejected Dior’s considerations regarding the level of attentiveness of the average consumer. The goods in question can be priced very differently: as a result, despite Dior’s products qualifying as luxury products in the real world and thus likely entailing an above-average level of attention on the side of consumers, such a fact does not have a decisive impact on the assessment of distinctiveness.

The Board also noted that the sector of bags and the likes is characterized by a broad variety of shapes and that the EUTM applied for would not be a significant departure therefrom. As a result, the Board upheld the refusal to register the EUTM applied for in relation to “Bags, handbags, pouches (leather goods), travel kits (leather goods), toiletry and make-up cases (empty)”.

Vice versa, the Board considered that the application could proceed for the other contested goods, that is “Eyeglasses, sunglasses, sports glasses; spectacle frames, spectacle cases; cases, bags, satchels and protective covers for computers, tablets, mobile phones and MP3 players; phone cases; phone cases; chains for glasses” and “Leather and imitation leather; animal skins and furs; trunks and suitcases; wallets; wallet; card holders; leather or imitation leather briefcases; briefcases and briefcases in leather and imitation leather; garment bags for travel; leather or imitation leather key cases; backpacks, traveling bags; cases intended to contain toiletries; pouches (leather goods), leather boxes; umbrellas; leather straps.”

Comment

This decision adds to a long string of unsuccessful attempts on the side of fashion companies to register their less conventional signs as trade marks. As noted in this IPKat post, recent examples relate to Buffalo boots, Louis Vuitton’s Damier Azur pattern, Tecnica’s Moon Boots, and Eos lip balm case.

Again, it seems that Guerlain's success in registering the shape of its lipstick case as an EUTM is bound to remain the exception rather than the rule. 

As stated, to me the Dior Saddle's shape is clearly a trade mark: if something like that is not regarded as a significant departure from the norm and customs of the sector, then I tend to think that very few – if any – shapes will.

While the public interest rationale underlying the ‘significant departure’ test is something we can all agree with, perhaps it is time to ask and understand more in detail what the actual criteria are for one to pass it and what kind of evidence can assist in this regard. 

In the meantime, we shall see if and how the Dior trade mark ride continues. Stay tuned!