Luxury fashion brand Bottega Ventena faced a knockback when an application to register its 3D designs (below) as European trade marks under the handbag and purse class was refused. The Office of Harmonization for the Internal Market (OHIM) rejected the application on the grounds that the designs lacked “distinctive character”.
Bottega Ventena sought to protect the shape of the purse and handbag designs in its application. Under trade mark regulations, an application will be refused if the mark is, “devoid of any distinctive character”. The designs must be capable of acting as a “badge of origin” of the trade mark owner. The OHIM examiner found that consumers were unlikely to see the shape of the Bottega bag and identify where the bag had come from. Internet searches revealed other handbags and purses in the market with similar handle positioning and shape.
Evidence produced by Bottega Ventena regarding its reputation as a luxury brand along with sale figures were held to simply illustrate the brand’s success, and did not demonstrate that a consumer would identify the designs as being from Bottega.
The decision highlights the importance of ensuring that there is an element of uniqueness or distinctiveness in a 3D trade mark for the design of an item, such that a consumer would be able to identify the brand from the design (whether it be its shape, colour or texture).
If you would like advice about protecting and enforcing your designs, or any other IP related issues, please contact the IP and Media team at Pannone.
Our website is still under development, so some features may not work as expected.
(Please bear with us and feel free to let us know of any issues you may encounter)