Design Marks in a Nutshell
Design marks (“also known as 3D or design marks”) protects elements of the look of a product or its packaging, which intrinsically provide an indication of the entity behind the product. Instead of relying on a logo or word, a design mark uses the product’s shape itself as a brand identifier. This could be a distinctive bottle, a unique lipstick case, or an instantly recognisable shape.
In the EU, design marks are harder to register than other traditional trademarks as generally, achieving uniqueness in a product’s shape is not easy. To succeed, the shape must clearly stand out from what is common in the market.
- The shape must be distinctive and stand out from common market designs.
- Purely functional or decorative shapes are excluded.
- The shape must not be dictated by technical function or aesthetic value alone.
This ensures businesses cannot use trademark law to monopolise everyday or useful features.
If a shape is not distinctive on its own right, a brand can try to prove acquired distinctiveness, meaning consumers have learned to associate a shape with a brand through long-term use and advertising. This level of distinctiveness is not easy to prove and requires strong evidence across many EU countries, but it is possible in exceptional cases.
The Case
In 2024, fashion giant Dior filed a French and EU trademark application that attempted to protect the 3D shape of a transparent rectangular cosmetic and perfume bottle, most notably used for Dior’s Addict lipstick line. Following this, the EUIPO refused the trademark in March 2025.
The Appeal
In response to the refusal, Dior filed an appeal in May, which was conclusively rejected by the EUIPO’s Fourth Board of Appeal in October.
In its application, Dior compared its bottle to others on the market, arguing that its rectangular, transparent design with a metallic cap was distinctive.
Dior advanced two key arguments in its appeal:
- The bottle design (the cap’s geometry, reflective finish, and concentric-ring base) is distinctive, and is a clear indication of Dior’s iconic style, particularly as part of the Dior Addict collection, and
- trademark protection is needed to combat counterfeiters, who sell imitation products containing harmful substances.
However, the Fourth Board of Appeal rejected the arguments on the grounds that average consumers do not engage in such analytical comparisons. “The examples cited, like the mark in question, are merely variants of common rectangular bottle shapes.” The existence of several 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.
In its statement the EUIPO specified: “The object depicted in the application will be perceived merely as product packaging, since perfumes and other cosmetics are commonly sold in bottles”
The statement continues: “The visual elements emphasized by Dior — such as the transparent case, mirror-effect grey top, vertical lines, spherical cap, and ringed base — are decorative and typical features in perfume bottle design.”
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 which provides an exception, allowing such marks to be registered if they have acquired distinctiveness through use, 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, creating a demanding evidentiary threshold. If Dior cannot deliver this evidence or reach such threshold, its bottle shape will remain unregistrable as a stand-alone mark in the EU.
The Requirement for Distinctiveness
Many well-known brands have encountered significant obstacles when attempting to secure EU trademark protection for product shapes, and the refusal of Dior’s 3D bottle mark sits squarely within this established line of case law. Both the EUIPO and the Court of Justice of the European Union (“CJEU”) have consistently held that three-dimensional and packaging marks must depart significantly from the norms or customs of the relevant sector to function as indicators of commercial origin. Unlike word or figurative marks, consumers do not typically perceive a product’s shape or packaging as denoting trade origin. As a result, Article 7(1)(b) of the EUTMR imposes a particularly high threshold for inherent distinctiveness in respect of shape marks. The CJEU has confirmed that only a shape which allows the average consumer to identify the origin of the goods without cognitive effort may qualify for protection, and that even well-designed shapes will fail if they merely represent common market variations .
This strict approach is reflected across several high-profile decisions. Nestlé, for example, was unable to register the four-finger KitKat bar shape as an EU trademark because it lacked inherent distinctiveness and had not acquired distinctiveness throughout the European Union. Mondelez opposed the registration, arguing that shape lacked inherent distinctiveness across all member states. The CJEU confirmed that acquired distinctiveness must be proven in all Member States where the mark is refused, not merely in a substantial part of the EU. By contrast, luxury make-up brand Guerlain ultimately succeeded in protecting its iconic Rouge G lipstick case . Guerlain applied to register the shape of its Rouge G lipstick case as an EU trademark, claiming it was distinctive due to its unique design. The EUIPO refused the application, arguing the shape was not sufficiently different from common lipstick cases, leading Guerlain to challenge the decision before the General Court. The Court annulled EUIPO’s decision, holding that the Rouge G lipstick case had an unusual and memorable curved shape with jewel-like design that departed significantly from the norms of the sector, making it inherently distinctive. This meant the design could function as a trademark without needing proof of acquired distinctiveness.
The same principles have applied even to some of the world’s most recognisable brands. Despite the fame of soft-drink giant Coca-Cola’s historic contour bottle, more recent bottle designs have been refused registration on the basis that they did not differ markedly from standard beverage containers. Likewise, the shape of the Lego brick and the Maglite flashlight were rejected because their essential characteristics were dictated by technical considerations, triggering the absolute grounds for refusal under Article 7(1)(e) EUTMR.
These principles were reaffirmed again in Mag Instrument, ensuring that trademark law does not confer perpetual monopolies over functional or technical product features.
Taken together, this body of case law underscores the consistently high threshold imposed on 3D and packaging marks in the EU. To be registrable, a shape must be immediately perceived by the average consumer as identifying the commercial origin of the goods, and must not be dictated by technical function, product nature, or aesthetic value alone. Decorative, customary, or functional designs—no matter how commercially successful—will remain outside the scope of trademark protection unless they clearly transcend these limitations.
What does this mean for Businesses?
For businesses, this decision offers a practical takeaway: not every aesthetically pleasing or well-designed product shape can be protected as a trademark. To secure registration, a shape must act as an immediate indicator of commercial origin—something consumers recognise instantly as belonging to one brand, without analysing the details. If a product or packaging design resembles common market shapes or incorporates decorative or functional features, it is unlikely
Ultimately, the Dior case illustrates that while shape marks remain possible in the EU, the path to registration is narrow—and success depends on clear distinctiveness, strategic branding, and robust evidence.
The Dior decision reinforces a long standing principle in EU trademark law: while packaging and shape marks can offer powerful brand protection, only designs that clearly diverge from market norms—and are immediately perceived as indicators of commercial origin—stand a real chance of registration. The ruling also confirms that decorative, customary, or functional design elements will not qualify for trademark protection unless they achieve truly exceptional distinctiveness.
For businesses, this means that strategic design choices must be accompanied by equally strategic evidence building: consistent shape based branding, consumer education, and strong market recognition. As the Dior case moves into the acquired distinctiveness assessment, it highlights the importance of forward planning and documentation for any brand seeking long term protection of its packaging or product shapes in the EU.
How we can help
At Chetcuti Chetcuti Advocates, we support businesses seeking strategic and enforceable protection for their product and packaging designs by providing tailored advice on registrability, distinctiveness, and the most suitable form of IP protection. Our team conducts distinctiveness assessments, prepares and files shape and packaging trademark applications, and assists in building the robust evidence required for acquired distinctiveness under Article 7(3) EUTMR. We also handle all stages of EUIPO proceedings—from responding to examiner objections to representing clients before the Boards of Appeal—and offer long term brand portfolio management, including monitoring, enforcement, and anti counterfeiting strategy. Through our integrated approach, we help clients strengthen the legal protection of their designs while maximising the commercial value of their brands across EU markets.
