Handbags at dawn - Dior loses its latest standoff!

Whilst I can’t say I’m surprised, given the history of unsuccessful attempts by various fashion companies to register less conventional signs as trade marks, I was somewhat forlorn when I noticed that a decision had been issued by the Second Board of Appeal of the European Union Intellectual Property Office (“EUIPO”) against the John Galliano designed iconic Saddle bag shape mark application, applied for by Dior. The decision is in French, so reading it (via Google Translate) was somewhat painful. However after reading what I could of the decision (issued 7 September 2022) + the commentary from The Fashion Law, my thoughts are below:

In this case, despite referring to Guerlain's successful application to register the shape of its lipstick, Dior was unable to persuade the EUIPO that the shape mark applied for was distinctive and departed from the norm, at least in relation to a substantial part of the goods covered by the application. Instead, the Board considered that bags, purses and the like come in a wide variety of shapes and thus the shape in question is unlikely to be perceived by consumers as indicative of origin and instead consumers would rely on a number of factors, such as brand name, logo, etc, and not just shape alone. The Board stated that the shape mark in question was a mere variant of the shapes available on the market for such goods, and whilst Dior attempted to argue that the relevant consumer would pay a high level of attention (particularly taking into account the price point of such goods), and that the saddle shape was entirely different to to others in the market, the Board rejected these claims. In response, the Board pointed out that whilst Dior’s products undoubtedly are classed as high-end and expensive (and therefore consumers would be likely to pay a higher level of attention), this alone doesn’t impact the assessment of distinctiveness. As a result, the Board allowed registration of the mark only for:

Class 9: 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.

Class 18: 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.

The mark was, however, refused for the following (arguably core) goods:

Class 18: Bags, handbags, pouches (leather goods), travel cases (leather goods), toilet and make-up cases (empty).

This case highlights the difficulty that brands can face to register shape marks. Of course, the ‘significant departure from the norm’ test is incredibly important, ensuring that monopolies are not granted over shapes that should be available for all. That said, application of this does appear to be somewhat inconsistent and we can certainly feel Dior’s frustration on this one, particularly taking into account the absolute iconic nature of the Saddle bag, which is so unlike anything else on the market. But then again, maybe I just watched too much SATC in my twenties…! I’m keeping an eye on this one with keen interest.