Parfums Christian Dior has failed to secure an EU trademark registration for the shape of one of its cosmetics packaging designs – at least for now. In a decision late last month, the European Union Intellectual Property Office’s (“EUIPO”) Fourth Board of Appeal upheld an earlier refusal to register the appearance of the LVMH-owned brand’s transparent rectangular Dior Addict packaging as a figurative mark, finding that the design does not depart significantly from the norms and customs of packaging in the cosmetics and perfumery sector.
The mark consists of a translucent rectangular “case” with subtle vertical lines and a mirror-effect, metallic, slightly flattened spherical cap sitting on a concentric-ring base, a configuration that Dior argues is used on perfumery, make-up, and cosmetic products in its Dior Addict range.
The Background in Brief: The EUIPO examiner refused the application that Dior filed in September 2024 for lack of distinctive character under Article 7(1)(b) EUTMR, finding the design does not depart significantly from the design norms of the cosmetics and perfumery industry. Dior lodged an appeal in a bid to overturn the refusal.
>> Under Article 7(1)(b) EUTMR, signs that are devoid of distinctive character cannot be registered. This includes packaging shapes that consumers are likely to perceive as merely functional or decorative rather than as indicators of commercial origin.
A Case About Branding – and About Counterfeiting
Dior advanced two key arguments in its appeal: (1) The bottle design is an indication of the Dior’s brand identity, particularly as part of the Dior Addict collection, and (2) trademark protection is needed here in order to combat counterfeiters, who sell imitation products containing harmful substances.
Dior argued on appeal that the bottle shape functions as part of the Dior Addict brand identity and that trademark protection was necessary to combat counterfeit products containing harmful substances. The Board rejected both points. It agreed with the examiner that the relevant public – which displays an average level of attention when purchasing beauty products – is not accustomed to identifying source based on packaging shape alone in the absence of textual or graphic branding.
While Dior highlighted the cap’s geometry, reflective finish, and concentric-ring base as distinctive, the Board found these to be commonplace aesthetic variations that do not depart significantly from sector norms. The existence of many different bottle designs does not negate those norms, the Board noted; it simply means that the norm encompasses a broad range of familiar forms, including rectangular translucent containers with metallic caps. As for Dior’s anti-counterfeiting concerns, the Board reiterated that enforcement considerations are irrelevant to the question of inherent distinctiveness. Only shapes that already function as indicators of origin may obtain trademark protection.
Appeal Dismissed – But the Case Continues
In its decision on October 30, the Board dismissed the appeal and confirmed refusal under Article 7(1)(b) EUTMR for all goods in Class 3. However, the case is not over. Dior also claimed acquired distinctiveness through use under Article 7(3) EUTMR, an argument the Board did not rule on. The matter is now remitted to the examiner to assess whether Dior can prove that consumers have come to recognize the shape as identifying Dior due to extensive and consistent marketplace use.
To succeed on acquired distinctiveness, Dior will need to present robust evidence, which may include market surveys showing source recognition, sales and distribution figures, advertising demonstrating consistent shape-based branding, and third-party press (and influencer) references to the packaging itself as associated with Dior.
This evidence must show recognition in a substantial portion of the EU, making for a demanding evidentiary threshold. If Dior cannot meet it, the bottle shape will remain unregistrable as a stand-alone mark in the EU.
Share
