EUIPO Board of Appeal holds (iconic) shape of Dior Saddle bag to lack distinctiveness for ... bags and handbags

· trade marks,fashion,distinctiveness

If you were to indicate a handbag whose shape departs significantly from what is usual in this fashion segment, what would come to your mind? I, for once, would have little doubt and point to the shape of the iconic Dior Saddle bag.

Created by John Galliano in 1999 as part of Dior’s spring 2000 ready-to-wear collection, the Saddle was intended as “a handbag to mark a dawning age; how else were we expected to ride into the new millennium?”.

Since then, it has become a fashion and pop culture symbol, with fictional characters (like Sex and the City’s Carrie Bradshaw) and actual celebrities sporting it.

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Carrie Bradshaw with the now legendary Dior Saddle

As Vogue correctly points out, “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. Soon after its introduction, the purse earned It bag status with recurring resurgences.”

To me, the Saddle's is a shape that is absolutely and clearly distinctive and could be registered as a trade mark.

Yet, it seems that I would be wrong.

Indeed, thanks to reports on LinkedIn, I found out that earlier this month the 2nd Board of Appeal of the EUIPO refused (R 32/2022-2; the decision is currently only available in French) to allow registration of the Saddle shape in relation to “Bags, handbags, pouches (leather goods), travel kits (leather goods), toiletry and make-up cases (empty)”. The Board held that that the test of ‘significant departure from the norm or customs of the sector’, which is required for less conventional signs, would not be satisfied here.

Let’s see what happened and how the Board did reason.

Background

In 2021, Christian Dior Couture applied to register the 3D sign below as an EU trade mark (EUTM) for various goods in classes 9 and 18:

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The application was refused in part. The Examiner considered that the shape applied for would be regarded as “typical” in relation to the goods below and, as a result, would lack distinctiveness in relation to them:

  • Class 9 - Spectacle cases, Phone cases;
  • Class 18 - Leather and imitation leather; animal skins and furs; wallets; Wallet; card holders; Briefcases of leather or imitation leather; Leather or imitation leather key cases; Bags, handbags; Pouches (leather goods), travel cases (leather goods), toiletry and make-up cases (empty).

The Examiner deemed that in the reference sectors above consumers would not tend to rely on the shape of goods alone, but rather on the shape in combination with other elements, such as accompanying words and/or logos. Ultimately, Dior’s shape was considered a mere variant of the shapes available on the market.

Dior appealed. The Rapporteur noted that the identified bags below (?) would suggested that Dior’s shape would not diverge sufficiently from the norm and customs of the sector:

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In turn, also referring to the recent