Is the Dior Saddle Bag as distinctive as you thought? The EUIPO doesn't think so…

The Dior Saddle bag; so iconic. That's what many fashion lovers would say, anyway. Yet, despite its fame, the EUIPO in its recent decision refused to allow a trade mark application for the iconic 3D shape to accede to registration for certain goods including, significantly, bags and handbags.

The Office found that “the mark applied for consists of a combination of presentational features which are typical of the goods concerned and, therefore, it does not depart significantly, as a whole, from the norm or customs of the leather goods sector”.

Background

The Dior Saddle bag was originally created in 1999 by John Galliano as part of Dior’s spring 2000 ready-to-wear collection. Since then, the IT-bag has risen to popularity and has been spotted on the arm of many celebrities, from fictional character Carrie Bradshaw (Sex & the City) to Beyoncé.

In March 2021, Christian Dior Couture (Dior) applied to register a European Union Trade Mark for the 3D shape of its iconic Saddle bag in goods classes 9 and 18, for items including spectacles, spectacle cases, bags, handbags and purses.

To those interested in the fashion industry, the shape of the Dior Saddle bag may well be considered distinctive (as well as iconic) and therefore capable of being registered as a trade mark without objection, particularly in respect of bags and handbags. Indeed, Vogue has previously commented that “the bag’s defining feature was its shape”.

However, the EUIPO Examiner was of the opinion that the applied-for mark “would be seen by the relevant consumer as being typical of the shapes of the goods to which an objection has been raised” and did not consider Dior’s Saddle bag to be significantly different from other handbags, satchels, etc. on the market, rather a mere variant of such goods. Accordingly, the Examiner partially refused the trade mark application in respect of some of the applied-for goods, most significantly in respect of bags and handbags.

The Examiner noted in particular that to be capable of registration “the shape applied for must be materially different from a combination of basic or commonplace elements and be striking in order to function as a distinctive trade mark”. The Examiner therefore concluded that “taken as a whole, the mark applied for does not depart sufficiently, let alone ‘significantly’, from the norms and customs of the sector”.  In short, the shape mark was deemed devoid of distinctive character in connection with the refused goods, which included bags and handbags.

Appeal

On appeal, Dior sought to argue that the Saddle bag was, in fact, inherently distinctive or, in the alternative, that the Saddle bag had at least acquired distinctiveness through use in the course of trade. 

Dior sought to rely on the precedent of Guerlain’s recent success in achieving a trade mark registration for the 3D shape of its lipstick case, and put forward the following submissions:

• The reference sector for the Saddle bag product is haute couture and luxury ready-to-wear, meaning that the relevant consumers have a higher degree of attentiveness, or at least higher than average, in comparison to the average consumer;
• Dior’s applied-for mark was “very clearly different from shapes commonly encountered in the leather and eyewear sectors and in particular in luxury brands”. Dior provided evidence to demonstrate that the applied-for mark departed from the norm for bags (citing designs by Chanel, Louis Vuitton and Hermès), spectacle cases and telephone cases; and
• The mark resembles a horse-riding saddle, a shape which had not been seen in respect of handbags before its launch by the house of Christian Dior Couture. Dior therefore argued that “it must be held that the mark applied for, taken as a whole, has a minimum degree of distinctive character required”.

Unfortunately for Dior, the arguments failed to convince the EUIPO Board of Appeal, who maintained that the shape mark was devoid of distinctiveness in respect of at least some of the goods that Dior originally applied for.

The Board stated that “it is a well-known fact that [the accessories sector] is characterised by a multitude and abundance of shapes to which the public is regularly exposed.” The Board, in respect of the class 18 goods (ie bags), also stated that “the mark applied for consists of a combination of presentational features which are typical of the goods concerned and, therefore, it does not depart significantly, as a whole, from the norm or customs of the leather goods sector.”

Despite the Board rejecting the appeal in part, they did permit some of the previously rejected goods (for example, spectacles, wallets, purses and key cases), on the basis that the mark was distinctive in respect of those goods.  However, critically, the rejection was maintained in respect of bags and handbags.

Although Dior failed to overturn the Examiner’s decision on an assessment of the inherent distinctiveness of the mark, the Board remitted the case back to the Examiner to consider Dior’s alternative claim of “acquired distinctiveness” of the shape mark through trade.  The case is therefore subject to further review at the EUIPO and we eagerly await a decision on those arguments.

Comment

This decision adds to the list of many failed attempts by applicants to secure trade mark registration for the shape of fashion items and accessories in instances where, although such item has gained reputation in the fashion industry, it has not been afforded the same recognition by intellectual property offices. As such, Guerlain’s success in achieving trade mark registration for its lipstick case appears to be an anomaly.

Although it is possible to achieve trade mark registration for non-conventional marks, such as shapes, the Dior decision confirms that applicants generally still have a high hurdle to overcome in proving inherent distinctiveness, and without resorting to claims of “acquired distinctiveness”, in order to achieve registration.  The Guerlain decision suggests that inherent distinctiveness will only be found in shapes that significantly depart from the norms and customs of the reference sector. 

Our Intellectual Property Team will follow this case with interest and await the outcome of the further review, to see whether Dior has any success in arguing that, in the (apparent) absence of inherent distinctiveness, Dior has acquired distinctiveness in the shape mark to such an extent that bags made to the shape are synonymous with Dior alone.  Saddle-up as we await the EUIPO’s further decision in this case…

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