Shape mark protection in the EU

In general, EU trade mark law recognises trade mark protection for shapes. In theory, the criteria for assessing the distinctiveness of three-dimensional marks consisting of the appearance of the product itself should be no different from those applicable to other categories of trade marks.

However, in practice the protection of 3D shapes as trade marks has been proven to be extremely difficult. According to the EU case law, the consumer’s perception of shape marks (as well as, for example, position marks, colour marks, sound marks and multimedia marks) is not necessarily the same as it is in the case of a word or figurative mark. Rather, the average consumers might not consider the product shape or the shape of a packaging (in the absence of any graphic or word element) as an indication of origin – which is why de facto trade mark protection for a shape mark (based on inherent distinctiveness) seems to be much more difficult than in relation to a word or figurative mark.

As a rule of thumb: distinctiveness of a shape mark is more likely to be denied the closer the “usual” shape resembles the shape most likely to be taken by the product in question.

Therefore, distinctiveness is only assumed where a mark departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin.

Background to this case

Back in 2018, luxury cosmetics brand Guerlain applied to the EUIPO for a 3D mark representing the shape of a its Rouge lipstick:

Both the first instance EUIPO examiner and afterwards the Board of Appeal rejected the application on the basis of an assumed lack of distinctiveness.

The Board of Appeal examined in particular if the application would significantly depart from the norms or customs of the sector – a requirement that is nowadays applied to all “non-conventional” marks (such as shapes, and position marks). It found that lipsticks were all cylindrical in shape and consumers were used to oval-shaped containers. Also, the Board of Appeal said it was usual to find multiple shapes and that the specific characteristics of that application did not allow it to be distinguished in any significant way from the other shapes usually present on that market. Therefore, taken as a whole, the mark in question would not diverge sufficiently, let alone “significantly”, from the norms and habits of the sector.

Guerlain’s appeal to the General Court

Guerlain appealed this decision to the General Court and pointed out why actually its very specific lipstick shape does substantially differ from the usual lipstick shapes available on the market. The special characteristics of its “revolutionary” lipstick shape can be summarised as follows:

• Without any flat surfaces, the lipstick cannot stand vertically.
• The unique form resembles a boat, bassinet or an upside down gold bar, with round edges and a convex upper part.
• There is a rectangular hinge to open the product which than reveals a double mirror.
• There is an embossed oval shape on the case.

General Court decision

After an oral hearing the General Court had to decide about this case in July 2021 and it notably followed most of Guerlain’s arguments.

First of all, the court contradicted Guerlain by saying that the mere fact that “goods have a high-quality design does not necessarily mean that a mark consisting in the three-dimensional shape of those goods enables ab initio those goods to be distinguished from those of other undertakings”.

Also, the court confirmed there was no requirement for novelty or originality and the fact that the specialist press regarded the applicant’s sign as “revolutionary” was correctly not considered relevant for assessing the distinctiveness of the application.

However, on the other hand, the General Court held that “it is not inconceivable that the aesthetic aspect of a mark consisting in the shape of the packaging of a product, in this case its receptacle, may be taken into account, among other factors, in order to establish a difference in relation to the norm and customs of a sector - provided that that aesthetic aspect is understood as referring to the objective and uncommon visual effect produced by the specific design of that mark”.

It also reiterated that “the norm and customs of the sector cannot be reduced to the statistically most common form only, but include all the shapes which the consumer is accustomed to seeing on the market”.

The standard shape in the industry is cylindrical or rectangular, but Guerlain’s model was considered to resemble “a ship’s hull” or “a baby’s cradle”. The shape was also considered unusual because the lipstick could not be put down.

Therefore, according to the General Court, the “shape at issue is uncommon for a lipstick and differs from any other shape existing on the market”.

Key take away

Will it now become significantly easier to protect shapes as a trade mark in the EU? Unfortunately, the answer is no! However, the present case gives hope that the rather strict registration practice of the EUIPO could be overcome at least in some cases where the unusual shape of a particular product significantly differs from the industry norms and customs.

It remains to be seen how the story of shape mark protection in the EU continues and in particular if the EUIPO appeals this decision to the Court of Justice (and if their action will be considered admissible).

Further, there is already the next case around the corner with respect to shape mark protection. Already in September 2021, there has been the oral hearing at the General Court in the “Moon Boot” case (T-483/20) and we look forward to the respective decision expected at the end of 2021.