October 2018. Fragrance house Dior looks as though it might be granted a trademark registration in China for the shape of its well-known perfume J’adore. Which would be a significant victory, since the Chinese aren’t known for their generosity in protecting shape marks.
Dior’s application was initially refused by the China Trademark Office in 2015 on the grounds that the shape of the bottle wasn’t sufficiently distinctive. The luxury goods company got no further in its subsequent appeals. In April this year, however, the Chinese Supreme Court ruled that the China Trademark Office had made a flawed decision and ordered a reassessment. So there’s a good chance that this time, Dior will be granted the coveted shape mark protection.
Shape mark in eu is ‘dead’
While there now appears to be more scope in China for shape mark protection, in Europe the shape mark is largely ‘dead’, as a professor of trademark law recently put it. The criteria defining the distinctiveness of shape marks in Europe are very strict, which means that almost all shape marks are refused protection.
Examples of European shape marks that have been refused registration
When looking up unsuccessful shape mark applications, however, we came across one unusual case: that of the well-known Dopper bottle. In 2016, EUIPO refused an application to register the shape of its distinctive bottle as an EU trademark. But in May this year, a new application to register the same bottle was successful.
Left: the well-known Dopper bottle; centre and right: the recently accepted shape mark
Logo or shape?
The Dopper shape mark may only have been accepted because the distinctive Dopper logo is now clearly visible on the bottle. In such cases, the registration of a shape mark has a relative value, primarily in affording trademark protection to the bottle including the logo, rather than to the shape of the bottle itself (which in our view does nevertheless deserve protection).