EUIPO rules Dior Saddle bag shape trademark not distinct enough

EUIPO's Second Board of Appeal upheld the decision to refuse registration of the 3D mark relating to the shape of Christian Dior's Saddle bag, which was ruled at first instance by EUIPO because of its lack of distinctiveness.

Christian Dior first filed for registration of the three-dimensional trade mark at the European Union Intellectual Property Office (EUIPO) on 24 March 2021. The EUIPO initially 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 EUIPO indicated 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.

This unique design was created by John Galliano in 1999 as part of Dior's spring 2000 ready-to-wear collection. While the designer undoubtedly hoped for success for the bag, little did he know just how significant the now-defining piece would be for the luxury fashion house. The popularity of the bag skyrocketed as it appeared on the shoulders of celebrities such as Destiny's Child, Paris Hilton, and Mischa Barton, as well as a character of the popular comedy-drama series Sex and the City, Carrie Bradshaw. Following its appearance on the show in 2001, Dior's accessories sales were up to 60% due to the bag's success.

The public interest in the Saddle bag started to slow down around the time Galliano left Dior in 2010 to be succeeded by Raf Simons. In 2014, some more celebrities, such as Beyoncé and CL, made public appearances wearing the vintage Saddle bag, which led to another spike in sales. The surge in popularity was hard to ignore, and so in 2018, Dior announced the resurrection of one of the Saddle bags with Kim Jones' first collection for Dior Homme, as well as Maria Grazia Chiuri's Fall/Winter 2018 range.

Derived from the shape of a horse saddle, the handbag has a unique asymmetric shape with the unmissable metal D hanging from the flap. The looks of the bag have earned worldwide praise from fashion critics and consumers. Despite that, within the realm of trademark law, if a product is iconic, it does not necessarily mean that it is distinct enough to be registered as a trademark. 

Shape trademark is a kind of unconventional trademark that helps protect specific features of products whose visual appearance has attained a distinct uniqueness and popularity, so much so that the public at large may recognize the product because of these features. It also provides the owner with a clear commercial advantage in manufacturing and selling those products and/or packaging.

The process of registering these trademarks can be significantly more difficult, as they have to meet certain criteria in order to achieve registration. Certain conditions are required to be fulfilled to register an unconventional trademark: 

There are multiple examples of registered shape trademarks by well-known companies, from Coca Cola to Rubik's Cube, brands are always looking for opportunities to expand their trademark portfolio to cover original designs.

The case of the Dior Saddle bag highlights the difficulty that brands can face in registering shape trademarks. Despite that, it is unlikely that the recent surge in fillings for unconventional trademarks will subside anytime soon. As more brands are attempting to protect different forms of their intellectual property, we will see more conflicting decisions on the nature of trademark distinctiveness as the laws get more refined with each case.