In the latest instalment of the fashion industry’s attempts to register three-dimensional trade marks, Christian Dior Couture has almost entirely failed to secure trade mark protection for the shape of the iconic Saddle Bag at the EUIPO on the basis that it’s just another bag. This is in sharp contrast with British Vogue which describes the Saddle Bag as “a decade-defying “It” bag”. Outraged fashionistas predict an appeal to the General Court.
The “Saddle Bag” was designed in 1999 by John Galliano for the Dior spring 2000 ready-to-wear collection. It has recently been reimagined and relaunched and can be yours in a variety of prints for just shy of three thousand pounds. Over the years, the bag has featured on the arm of Carrie Bradshaw in Sex and the City, as well as being sported by a whole host of real-life celebrities including Bella Hadid, Sienna Miller, Jennifer Lawrence and Beyonce. Its recognisable shape, which calls to mind a horse-riding saddle, has graced the pages of many a glossy magazine, but according to the EUIPO’s recent decision, it is not “distinctive” enough to make it onto the EU trade mark register.
Dior’s Trade Mark Application
In 2021, Dior applied to register the 3D shape of the Saddle Bag (shown below) as an EU trade mark for various types of bag in Class 18, as well as spectacle and phone cases in Class 9.
The Examiner partially rejected Dior’s application, reasoning that the shape was “typical” in relation to the goods applied for and, as a result, would lack distinctiveness, which is a requirement for trade marks to be registrable. In addition, the Examiner held that consumers in the relevant sector would not rely only on the shape of a product as an indicator or origin but would instead rely on the shape in combination with other factors, such as words or logos (e.g. Dior’s name). According to the Examiner, the shape alone was a ‘mere variant’ of other shapes of bags available on the market. The Examiner felt that the shape of the bag had a functional purpose in terms of storage of objects, rather than serving as a distinctive trade mark.
Dior appealed to the EUIPO’s Second Board of Appeal, relying heavily on Guerlain’s successful registration of a 3D lipstick case in 2021 (which you can read about in more detail here). Amongst its arguments in support of registration, Dior claimed that:
The Examiner had misunderstood the nature and category of consumers to which the bag is sold. Dior argued that consumers of ready-to-wear luxury couture are more discerning than other consumers and “will show high, or at least above average attention”.
The shape of the bag is different to other luxury designer goods in Classes 9 and 18 being sold by other luxury fashion house, citing the below bags designed by Chanel, Louis Vuitton and Hermes respectively.
The shape of the bag, which is reminiscent of a horse-riding saddle, had not been used in the luxury bag market prior to John Galliano’s design.
Board of Appeal’s Decision
The Board of Appeal was unconvinced by all of Dior’s arguments and upheld the Examiner’s refusal to register the mark.
The Board of Appeal explained that, although the standard for registration of 3D marks is the same as that of word or figurative trade marks, consumers are unlikely to use the shape of a product as an indicator of its origin, but instead rely on shapes in combination with words, logos or motifs. In practice, it may be more difficult to establish distinctive character in 3D marks than in word or figurative marks.
The Board stressed that a departure from the norm is not enough for a mark to be deemed distinctive. Only shapes which significantly depart from the norms of the sector are registrable under Article 7(1)(b) European Union Trade Mark Regulation (“EUTMR”).
The Board referred to the below examples of bags which it felt underscored that the difference between the Saddle Bag shape and existing bags on the market was insufficient to constitute a “significant departure” from the norm in the field of fashion accessories.
The Board upheld the refusal to register Dior’s 3D mark for handbags. Whilst bags are clearly the most relevant product for Dior, it is noteworthy that Dior did manage to secure registration of the shape mark for various goods other than bags (e.g. sunglasses), as well as the perhaps slightly more relevant trunks and suitcases, wallets and briefcases.
Fashion Trade Mark Trends
This case is an interesting example of where kudos in the fashion realm has not translated into recognition by the trade mark authorities. Despite Dior’s valiant efforts to convince the Board of Appeal, it seems that even “It” bags are not guaranteed to qualify as distinctive trade marks.
Fashion and consumer goods companies have been attempting to register non-traditional trade marks in relation to their products for quite some time, with varying degrees of success. Previously, we have seen the EUIPO reject trade mark applications for the shape of Moon Boots, LVMH’s Damier Azur pattern, Birkenstocks’ surface pattern, and Buffalo Boots’ position mark.
The fact pattern in Dior most closely resembles the Guerlain lipstick case, which Dior referred to in its arguments. In that case, Guerlain applied to register the shape of its lipstick case as a 3D mark. Guerlain’s application was also rejected at Examination and Appeal stages, but Guerlain was ultimately successful when the General Court overturned the First Board of Appeal’s decision and registered the 3D trade mark for ‘lipsticks’ in class 3. The Court found distinctiveness in the shape of the lipstick case which it said resembled that of a ‘boat hull’ or ‘baby carriage’.
The fight for trade mark recognition for this particular “It” bag is not over yet. Dior could follow in Guerlain’s footsteps and further appeal the decision to the General Court, or try to secure registration on the basis of acquired distinctiveness under Article 7(3) EUTMR.
Whether you wholeheartedly agree with the Board of Appeal’s decision or think it is an affront to fashion, this is unlikely to be the last example of brand owners striving to protect iconic pieces through trade mark registration. Trade mark registration offers a perpetual monopoly, so is a particularly attractive enforcement tool if it can be obtained. Equally important is design protection, which may be easier to obtain. Registering a design provides 25 years of protection against copying.
The Board of Appeal’s decision in Dior seems to indicate that the Guerlain registration may be the exception rather than the rule in the EUIPO’s rejection of fashion-related trade mark applications. It highlights the importance of being able to evidence a significant departure from the norms and customs of the sector involved. Being recognised as an “It” bag is not enough. A bag will have to be a very unusual shape to qualify for protection given the presence in the market of a variety of different shaped bags. Perhaps Dior would have fared better if the 3D mark applied for had included the straps and additional embellishments shown on the real-life bags.
Fashion fans and owners of other iconic bags like the Baguette, the Bayswater or the Birkin will be monitoring progress of Dior’s case with interest.
Co-authored by Sophie Davison, Trainee Solicitor at CMS.