20 years after the launch of a now iconic model, Dior has applied to the Us Patent and Trademark Office for registration of the famous 'Saddle' bag as a three-dimensional trademark.
The Saddle bag has been re-introduced from the F/W 2018-19 collection with the addition of new details, prints and materials to the saddle bag accessory.
A three-dimensional mark is a sign consisting of the three-dimensional shape of a product or its appearance and is governed by a specific regulation, both at European and Italian level, which provides for the exclusion of registrability for signs that:
consist of the shape, or other characteristic, imposed by the very nature of the product;
the shape, or other characteristic, of the product necessary to obtain a technical result;
the shape, or other characteristic, which gives substantial value to the product.
With regard to the first limitation, the rationale of this rule is to prevent a renewable right, potentially unlimited in time, such as a trade mark, from monopolising forms which derive from the natural form of the product, or which in any case are devoid of distinctive character because they coincide with a standard form in the opinion of consumers.
With reference to the prohibition to register a functional form, the rationale of the standard is to protect the market by preventing a person from becoming the owner of a perpetual right on technical solutions or functional characteristics of a product which, on the contrary, can be protected through patents for inventions.
Finally, as regards the limit on registering a substantial form, the rule is intended to prevent the registration of a form which, on its own, is capable of determining consumer choice. That characteristic, in fact, falls within the protection of patents for design rights which, unlike trade marks, is limited in time. On this point, Italian case law has ruled that a three-dimensional trademark can be registered if the shapes for which protection is sought have a functional or aesthetic value, such that they do not configure a particular character of ornament or utility.
In one case, registration as a three-dimensional trademark was refused on the grounds that it was possible to perceive the aesthetic element as predominant, if not exclusive, and in any case with such prominence as to determine the consumer's choice. If Dior wanted to extend the protection of the three-dimensional mark, also at Community level, this third requirement will most likely be the most difficult obstacle to overcome for the French maison. Moreover, it is worth remembering that in two judgments in 2013, the General Court of the European Union denied Bottega Veneta the registration as a three-dimensional Community trademark of two different shapes of handbag, one characterized by the particular shape of the handles and the other by the absence of closing devices. In the present case, the judges considered that the shapes for which Bottega Veneta applied for registration did not fulfil the essential function of a trademark, that is, as an indicator of the origin of a product.
