On 7 September 2022 the Second Board of Appeal of the European Union Intellectual Property Office (“the Board”) held that the shape of the iconic Dior Saddle bag was not distinctive enough to be registered as a trade mark. This conclusion may come as a surprise, but the overall trend in recent case law is that it is very difficult to register unconventional fashion trade marks, three-dimensional marks included, in the EU. Other examples of fashion marks that are part of the trend of being denied trade mark protection during the last couple of years are the platform sole of the Buffalo sneakers, the Tecnica Moon Boot, the chequerboard pattern of Louis Vuitton and EOS’ egg-shaped lip balm.
The focal issue for unconventional fashion marks has been to fulfil the requirement of distinctiveness in Article 7(1)(b) and Article 7(3) in the European Union Trade Mark Regulation (EUTMR). In principle, the legal criteria for accessing the distinctive character of three-dimensional marks, either inherent distinctiveness in the meaning of Article 7(1)(b) EUTMR or, alternatively, acquired distinctiveness through its use in the meaning of 7(3) EUTMR, are no different from that of other trade mark applications. However, the threshold to pass the criterion of distinctiveness is higher for threedimensional marks as the average consumer is not considered to be used to presume the origin of a product based on their pattern or shape. Therefore, it has been established through case law that “only a mark which departs significantly from the norm or customs of the sector of the goods and services at issue and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character” - the so called “significant departure” test. 2
2. The Dior case
2.1 The Examination Division
CHRISTIAN DIOR COUTURE (“Dior”) applied to the European Union Intellectual Property Office (“EUIPO”) for registration of the saddle shape as a three-dimensional sign for various goods in class 9 and class 18 (including, for example spectacles, phone cases and different types of bags). By decision of 11 November 2021, the Examiner refused the application in part in accordance with Article 7(1)(b) EUTMR because of lack of distinctiveness for several of the applied goods. The Examiner considered that as the three-dimensional sign would be regarded by the relevant consumer as being typical for inter alia bags, handbags and pouches (leather goods), the sign would be considered as a mere variant on the market. The Examiner stated that the sector concerned is characterized by a variety of shapes and that the consumers in the relevant sector therefore look not only at the shape of the product but also, for example, at logos or other indications of origin.
Without considering the difficulties that appear when studying previous case law on the registration of three-dimensional fashion trade marks in the EU, the conclusion that the Dior Saddle bag, which in this case is the most important product for Dior, would lack distinctiveness can be perceived as surprising. Inspired by a horse saddle, it has a unique asymmetric shape together with a metal D hanging from the flap. As stated by Vogue: “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”. 3 The saddle-shaped bag has also become an iconic fashion symbol and has been seen carried by almost every celebrity including Paris Hilton, Beyoncé and Bella Hadid.
2.2 The Board of Appeal
Dior filed an appeal against the Examiner’s decision arguing that the contested mark would be inherently distinctive or, in the alternative, had acquired a distinctive character through its use. Dior’s line of argument was that the sector is haute couture and luxury ready-to-wear and the products at issue are therefore not aimed to the average consumer but instead to more wealthy people who would display a higher degree of attentiveness in the field. Dior thus held, contrary to what the Examiner stated, that the relevant consumer will show a high or at least an above-average level of attention before buying these products. Further, Dior stated that a brief internet search showed that the contested sign evidently stands out from the norms in the sector of leather goods and eyewear, especially as regards luxury brands. In conclusion, Dior stated that the shape of a riding saddle had never been used in the fashion sector before and is therefore a total break from the norm and customs in the sector. Specific reference was also made to the Guerlain lipstick case in support of the arguments (see further section 3 below).
On 7 September 2022, the Board delivered its decision in the case. In broad terms, the Board concluded that the three-dimensional mark was devoid of inherent distinctiveness for some of the applied goods, including the most relevant product for Dior, that is the iconic saddle bag, according to Article 7(1)(b) EUTMR. As for the alternative claim made by Dior, namely that the shape had acquired a distinctive character through its use within the meaning of Article 7(3) EUTMR, this question was sent back before the Examiner to consider.
Initially, the Board recalled that the legal criteria for assessing the distinctive character of unconventional marks are no different from those for other categories. However, the Board further stated, in line with previous case law, that consumers are not used to see only the shape of products as indicators of commercial origin. The absence of any graphical or textual component will therefore make it difficult for the consumer to establish the commercial origin of the shape and, as a consequence, only a mark which departs significantly from the norm and customs of the relevant sector will fulfil the requirement of distinctive character in Article 7(1)(b) EUTMR.
Furthermore, contrary to Dior’s claim regarding the high level of attentiveness of the average consumer, the Board stated that the goods applied for, with the exception of “Leather and imitation leather; animal skins and furs” in class 18, are aimed at the general public with an average level of attention. The Board stated that despite that some of the relevant products may be particularly expensive, the price range can differ quite extensively and, since there is also a variety of marketing channels used, the relevant products cannot only be regarded as being of an exclusive nature. Consequently, even assuming that the public will have an above-average level of attention due to the qualification of the products as expensive and quality design, that fact will not have a decisive impact on the legal assessment of distinctive character.
The Board also pointed out that the relevant sector, that is the accessories sector, include and is characterized by a variety of forms which are regularly exposed to the public. A simple deviation from the norm and customs of the relevant sector will therefore not be sufficient to indicate commercial origin. In relation to bags, handbags and pouches, the Board held that simple searches on the internet shows that the contested mark have similarities in shape in relation to the goods in the sector and is therefore only to be considered as a variant of the shapes. The Board stated that the contested mark is made up of a combination of elements typical of the goods in the sector and thus, in its entirety, do not depart significantly from the norm and customs of the relevant sector. Consequently, the Board upheld the refusal due to lack of distinctive character in Article 7(1)(b) EUTMR in relation to “bags, handbags, pouches (leather goods), travel kits (leather goods), toiletry and make-up cases (empty)”. As specified, any divergence, such as the “slightly” different shape of the flap, the presence or absence of shoulder straps and rectangular or rounded shape, is not sufficient to conclude distinctive character as the divergence must be significant and immediately apparent to customers. Contrary, as for the other contested goods, inter alia sunglasses, spectacle cases, phone cases, wallets, briefcases and traveling bags, 4 the Board stated that it was not aware of any products having this shape, or a similar shape, and therefore decided that the application could proceed for these goods.
Although the decision of the Board of Appeal still not excludes a finding on appeal that the threedimensional shape has acquired a distinctive character through its use for the goods not granted protection within the meaning of Article 7(3) EUTMR, the likelihood of this is low in light of previous case law for other fashion items. As will be discussed further below in section 3, extensive evidence is required to prove acquired distinctiveness in the entire EU. Nevertheless, many would probably agree, especially in fashion interested circles, that there are good arguments that the saddle shape is significant and immediately apparent to customers, despite the variety of forms existing in the fashion industry. The “significant departure” test for distinctiveness is clearly motivated when assessing unconventional marks as the shape in itself must indicate commercial origin. For this reason, in most cases it may be justified that the design only has an aesthetic function. However, if the iconic and unique Dior Saddle bag is not distinctive enough to be registered as a three-dimensional trade mark, it may be difficult to see what could be. Furthermore, the importance of logos alone as indicators of commercial origin should not be exaggerated in relation to brands products in the fashion industry. At the same time, it is difficult to determine to what extent the decision is based on insufficient argumentation and/or lack of evidence. It remains to be seen if the Dior case will make all the way to the EU General Court (“the GC”).
3. Acquired distinctiveness of unconventional fashion trade marks
As stated in section 1, the overall trend in recent case law is that it is very difficult to register unconventional fashion trade marks and the Dior case is thus just one in line which demonstrates this. As regards the criterion of acquired distinctiveness in the meaning of Article 7(3) EUTMR, this has however only been assessed in the Louis Vuitton case (as this was not part of the subject matter of the appeal of the other named proceedings).
The claim of acquired distinctiveness for the Louis Vuitton pattern was ruled by the GC as recently as 19 October 2022. 5 As well as for the Board’s assessment of inherent distinctiveness and the lack thereof previously upheld by the GC,6 the GC now also agreed with the Board that the applicant had not provided any convincing evidence of acquired distinctiveness for the chequerboard pattern through use throughout the EU territory. More specifically, the applicant had failed to show acquired distinctiveness as regards Estonia, Latvia, Slovakia, Lithuania and Bulgaria. As the GC stated, it is not necessary to prove acquired distinctiveness in each Member State. However, this does not mean that it is sufficient to prove acquired distinctiveness in only a substantial part or in the majority of the EU territory. The GC nevertheless rejected Louis Vuitton’s argument that consumers, throughout the EU, engage homogenous in relation to luxury brands especially since they travel and use the internet on a regular basis. Such a statement was apparently too general in nature.
The decision by the GC in the Louis Vuitton case provides a useful basis for understanding of what is required to prove acquired distinctiveness and, in particular, what constitutes good and admissible evidence. As held by the GC, account will be taken to inter alia the mark’s market share, the amount invested in promoting the mark, how widespread and long-standing the use of the mark has been, opinion polls, statements from industry or other trade and professional associations and chambers of commerce. 7 In summary, however, the evidentiary requirements are clearly not easy to achieve if even Louis Vuitton fails to prove distinctiveness through use in the EU territory.
A noteworthy example of inherent distinctiveness in the meaning of Article 7(1)(b) EUTMR, and an exemption to the many cases where protection has been denied, is the decision regarding the boat shaped lipstick of Rouge G de Guerlain.8 The GC ruled that the shape, reminding of “a ship’s hull” or “a baby’s cradle”, is uncommon for a lipstick and differs from any other existing shape on the market. Moreover, the shape was assessed as unusual as the lipstick could not be placed upright which reinforces the unusual visual effect as seen from the relevant public. The GC thus held that the shape of the lipstick could function as a trade mark since it possesses distinctive character.
4. Concluding remarks
In summary, the case law of the EU clearly indicates that it is not easy for a shape or pattern to be considered as a trade mark, neither by claiming inherent nor by acquired distinctiveness. As the Board held in the Dior case, the accessories sector is characterized by a variety of forms which are regularly exposed to the public and it will thus not be sufficient with a simple deviation from the norm and customs to indicate commercial origin. Although this may be a reasonable view as such, a mark can obviously be considered as a fashion symbol and at the same time lack distinctiveness under trade mark law – something of an anomaly.
Notwithstanding the above, there are public interests that justify the stricter approach assessing the distinctive character of unconventional marks and trade mark protection requires that the shape or the pattern in itself indicate commercial origin. In this context it is also important to consider the protection that is available for shapes and patterns under other intellectual property rights and, in particular, copyright and design rights. There are examples in the fashion sector where the applicant was granted trade mark protection and not copyright, or the other way around.9 It remains to be seen whether the stricter approach will be upheld in the future, or if fashion marks will enter into the trade mark domain as indicators of commercial origin rather than mere shapes or patterns.