Shape mark and word mark
Under European trademark law, you can not only register words and logos as a trademark but shapes of goods can also be protected as trademarks if they are distinctive. Well, this is the theory. However, in practice, registering a shape mark has become nearly impossible. The European courts set stringent requirements for the distinctive character of shape marks: the shape must depart significantly from the industry standard. With this somewhat subjective argument, almost every shape of trademark registration is now being shot down.
Dior saddle bag
Dior argued that it was the first to use this saddle shape for a bag. In addition, according to Dior, an internet study showed that this shape differs markedly from the competition’s bags.
Not significant
Not true, says EUIPO in its statement of 7 September 2022. A great variety of shapes characterises the bag market, and this shape does not depart significantly from that. In addition, EUIPO continues, we found one bag on Pinterest with this saddle shape. So your shape mark fails the test and is rejected. Well, this vague ‘departing significantly’ criterion quickly ends up in a he said- she said discussion.
More iconic shapes stranded
Dior is certainly not the first not to have its iconic shape protected as a trademark. EUIPO also refused the well-known shape marks below.
Bar to high
The bar is set extremely high for shape brands. Much too high in my opinion. But yes, the European Court of Justice has the final word, and trademark owners will (unfortunately) have to make do with that.
Bas Kist
