From Design to Distinctiveness

In 2023, Dior sought to register the three-dimensional shape of a transparent rectangular cosmetic and perfume bottle, used notably within its Dior Addict line, as a European Union trademark.

The application aimed to secure protection for the bottle shape itself, independent of word or figurative elements. Dior argued that:

1. The geometry of the cap, reflective finish, and concentric-ring base formed part of its iconic visual identity; and
2. Trademark protection was necessary to combat counterfeit products circulating in the market.

The EU Intellectual Property Office (EUIPO) refused the application. Dior appealed the refusal, but in its decision of 30 October 2024, the Fourth Board of Appeal upheld the examiner’s findings.

Under Article 7(1)(b), trademarks devoid of distinctive character shall not be registered.

The Court of Justice of the European Union (CJEU) has consistently held that three-dimensional marks consisting of product shapes or packaging must depart significantly from the norms or customs of the sector to be inherently distinctive.

As the EUIPO stated in Dior’s case:

“The object depicted in the application will be perceived merely as product packaging, since perfumes and other cosmetics are commonly sold in bottles.”

The Board further observed:

“The examples cited, like the mark in question, are merely variants of common rectangular bottle shapes.”

The decision reinforces a core principle: consumers do not typically analyse packaging design as a badge of origin unless it is markedly unusual.

Dior argued that the bottle’s transparent case, mirror-effect grey top, vertical lines, spherical cap, and ringed base distinguished it from competitors.

The Board rejected this submission, holding that:

• These elements were decorative and typical within the perfume and cosmetics sector.
• The existence of multiple variations of rectangular bottle designs does not establish distinctiveness.
• The “norm” in the sector encompasses a broad range of familiar forms, including translucent rectangular containers with metallic caps.

Crucially, the Board reiterated that anti-counterfeiting concerns are irrelevant to inherent distinctiveness. Trademark registration is not granted as a defensive commercial tool unless the sign already performs an origin-indicating function.

The appeal was therefore dismissed under for all goods.

The case is not concluded. Dior invoked Article 7(3) EUTMR, which allows registration where a mark has acquired distinctiveness through use.

The Board did not rule on this argument but remitted the matter to the examiner for assessment.

To succeed, Dior must demonstrate that:

• A significant portion of the relevant public across the EU recognises the bottle shape as identifying Dior;
• Recognition exists in all Member States where the ground for refusal applies;
• Evidence includes market surveys, advertising materials, sales figures, distribution data, and third-party references.

The CJEU confirmed in Nestlé v Mondelez² that acquired distinctiveness must be proven throughout the European Union, not merely in a substantial part.

This represents a substantial evidentiary burden.

The Dior decision aligns with established EU jurisprudence:

• Nestlé (KitKat four-finger shape) – registration refused due to insufficient proof of acquired distinctiveness across the EU.
• Guerlain3 (Rouge G lipstick case) – registration ultimately allowed after the General Court found the design departed significantly from sector norms and was inherently distinctive.
• Mag Instrument4 – rejection of the Maglite flashlight shape where essential characteristics were dictated by technical function under Article 7(1)(e) EUTMR.
• Lego brick cases5 – refusal due to technical functionality preventing perpetual monopoly protection.

These cases confirm that:

• Decorative or customary shapes are insufficient.
• Functional or technically dictated features are excluded.
• Only shapes immediately perceived as source identifiers qualify for protection.

The Dior ruling underscores several practical considerations:

1. Design Excellence Is Not Enough

Aesthetic appeal or commercial success does not equate to trademark distinctiveness. Packaging must clearly transcend market norms.

2. Early Evidence Planning Is Essential

Brands seeking 3D protection should:

• Promote the shape itself as a brand signifier;
• Use consistent shape-focused marketing;
• Document sales and distribution data;
• Commission EU-wide recognition surveys where appropriate.

3. Consider Complementary IP Protection

Where trademark protection is uncertain, alternative rights may be more appropriate, including:

• Registered Community Designs (RCDs);
• Copyright protection;
• Trade dress enforcement strategies (where applicable).

As one of our Intellectual Property lawyers notes:

“Three-dimensional marks are among the most strategically valuable – but also the most demanding – forms of EU trademark protection. Success depends less on design ambition and more on demonstrable consumer perception.”

Broader Policy Context

The EU approach reflects a policy balance: trademark law must not grant indefinite monopolies over shapes that competitors may legitimately need to use.

Article 7(1)(e) EUTMR further ensures that shapes dictated by technical function, product nature, or substantial value cannot be monopolised.

The Dior decision reinforces that trademark law protects indicators of origin, not product innovation or design aesthetics per se.

Our Intellectual Property team advises luxury brands, consumer goods companies, and multinational groups on:

• Distinctiveness assessments for 3D and packaging marks;
• Filing and prosecuting EU trademark applications before EUIPO;
• Developing evidence strategies for acquired distinctiveness under Article 7(3) EUTMR;
• Representation before EUIPO Boards of Appeal;
• Coordinated EU brand enforcement and anti-counterfeiting strategies;
• Integrated trademark, design, and portfolio management planning.

We work closely with in-house teams to ensure brand protection strategies align with long-term commercial objectives and EU regulatory requirements.

[question] Why are 3D trademark applications harder to register in the EU? [/question]
[answer] Because consumers do not typically perceive product shapes or packaging as indicators of origin. The shape must depart significantly from sector norms and function immediately as a badge of commercial origin under Article 7(1)(b) EUTMR. [/answer]

[question] What is acquired distinctiveness under Article 7(3) EUTMR? [/question]
[answer] It allows registration of a mark that lacks inherent distinctiveness if the applicant proves that consumers across the EU have come to recognise the sign as identifying the commercial origin of the goods through long and consistent use. [/answer]

[question] Are anti-counterfeiting concerns relevant to trademark distinctiveness?  [/question]
[answer] No. The EUIPO has confirmed that enforcement considerations do not influence inherent distinctiveness. Only shapes that already function as indicators of origin may be registered. [/answer]

[question] Can decorative packaging features qualify for EU trademark protection?  [/question]
[answer] Only if they depart significantly from sector norms and are immediately perceived by the average consumer as identifying commercial origin. Decorative or customary features alone are insufficient. [/answer]