The EUIPO Fourth Board of Appeal recently issued five decisions concerning trademark applications filed by Parfums Christian Dior in September 2024. These cases highlight the challenges luxury brands face when seeking protection for non-traditional marks, particularly shapes and packaging designs.

Dior’s applications

Dior applied for five EU trade marks which all related to its Addict products; two marks in relation to its Lip Glow Oil and three in relation to the Addict perfume bottle. All marks covered perfumes, cosmetics, and make-up in Class 3. An EUIPO examiner initially rejected all applications finding that each of the marks were devoid of distinctive character. Dior appealed the decision.

Appeal decisions

For the Addict perfume bottle marks, the Board upheld the refusal in full. It concluded that the design was typical and commonplace within the perfume industry, lacking any distinctive character or significant departure from established packaging norms.

For the Lip Glow Oil marks, the Board partially overturned the initial refusal, allowing registration for goods in the perfumery category on the basis that the term “LIP GLOW OIL” is not descriptive in that context. However, the refusal was maintained for cosmetics and make-up products, where the term was deemed descriptive and the packaging considered standard.

But all is not lost for Dior! All marks have been remitted to the examiner to assess whether they have acquired distinctiveness through use.

The importance of acquired distinctiveness for brands

Protecting distinctive packaging or product shapes through trade marks can be a powerful way to safeguard brand identity. However, success depends on distinctiveness. Common or purely functional shapes rarely qualify as inherently distinctive. To register a 3D trade mark on this basis, the design must clearly stand out from industry norms and serve as a strong indicator of origin, not just offer aesthetic appeal.

If inherent distinctiveness is lacking, the next question is: has the design acquired distinctiveness through use? This often requires evidence that consumers associate the shape or packaging exclusively with your brand.

Acquired distinctiveness is a valuable mechanism in trade mark law because it enables signs that were initially non-distinctive to gain protection through sustained use and consumer recognition. This principle ensures that businesses investing heavily in branding can secure legal rights over marks that consumers have come to associate with their goods or services. Without acquired distinctiveness, many iconic designs and patterns would remain unprotected, leaving brands vulnerable to imitation. For example, Burberry’s iconic check pattern was considered by the UKIPO to be inherently non-distinctive but evidence showed the mark had acquired a distinctive character as a result of the use made of it. Similarly, the Louboutin red sole, which is now synonymous with luxury footwear, was registrable only after proving that it had gained distinctive character.

Whilst acquired distinctiveness is valuable, the evidential burden is high. No doubt Dior’s legal team will be gathering as much evidence as it can (such as sales data, advertising spend etc.) to convince the examiner the marks have acquired distinctiveness. 

Key takeaways

Non-traditional marks can strengthen brand identity, but they require strategic planning and strong evidence. If your packaging or product shape isn’t inherently distinctive, start building recognition early and document it thoroughly.