EU General Court on three-dimensional trademark: “A lipstick is a lipstick is a trademark.”
With its judgement of July 14, 2021 (Case No. T-488/20) the General Court of the European Union rendered a decision on an application for registration of a three-dimensional EU trademark consisting of the shape of an oblong lipstick case that is flat on one side with rounded ends. The mark sought protection for “Rouges à lèvres“ (lipsticks) in class 3 and has an application date of October 19, 2018.
The EUIPO refused registration and the refusal was upheld by the Board of Appeal of the EUIPO based on absolute grounds for refusal, namely a lack of distinctive character.
The General Court decided that the shape of the three-dimensional mark significantly departs from the norms and customs of the lipstick sector and has distinctive character. Therefore, the refusal based on Article 7 Section 1 lit. b) European Union Trademark Regulation (EUTMR) was unjustified.
According to Article 4 EUTMR, a trademark may consist of any sign, amongst others, the shape of goods or the shape of the packaging of goods.
It is worth noting that in 2021 only about 0.36% of the trademarks registered with the EUIPO were three-dimensional marks. In 2021, a total of 1,973,142 trademarks were registered with the EUIPO (see EUIPO Statistics for European Union Trade Marks 1996-01 to 2021-06 Evolution, 5.1. – 2/2) and approximately 7,193 of these trademarks were three-dimensional marks (see EUIPO Statistics for European Union Trade Marks 1996-01 to 2021-06 Evolution, 5.2. – 1/1). Relevant absolute grounds for refusal are stipulated in Article 7 Section 1 of the EUTMR.
Pursuant to Article 7 Section 1 lit. e) EUTMR, a trademark mark shall not be registered which consists exclusively of (i) the shape, or another characteristic, which results from the nature of the goods themselves (ii) the shape, or another characteristic, of goods, which is necessary to obtain a technical result or (iii) the shape, or another characteristic, which gives substantial value to the goods.
Pursuant to Article 7 Section 1 lit. b) EUTMR, a trademark must be refused from registration if it is devoid of any distinctive character regardless of the type of trademark.
In the present case, the General Court was called on to render a decision in an appeal against the decision of the First Boards of Appeal at the EUIPO. The Boards of Appeal had upheld the refusal of the three-dimensional trademark application based on Article 7 Section 1 lit. b) EUTMR because the mark was found to be devoid of distinctive character.
The applicant requested that, if the decision to refuse the mark were to become final, it would nevertheless be registered based on an acquired distinctive character. In view of the decision from the General Court, their request seems to be no longer relevant.
The application was initially refused on August 21, 2019 and the applicant then appealed the decision. The First Boards of Appeal upheld the refusal on June 2, 2020. The Boards of Appeal mainly argued that the shape of the mark did not differ from common lipsticks available on the market. Lipsticks are cylindrically shaped and consumers are used to this shape. The Boards of Appeal further argued that, even if one assumed that the mark differed from all types of lipsticks, it is still common that different shapes are offered and the trademark will only be perceived as a variation of the common shape. Therefore, the mark does not sufficiently differ from the shape that is common in the market.
With regard to the assessment of the distinctive character of a three-dimensional mark, the General Court underlined that novelty and originality of a design are not relevant criteria with regard to the distinctive character of a trademark pursuant to Article 7 Section 1 lit. b) EUTMR. A three-dimensional mark must significantly differ from the norms and common shapes of the relevant goods offered in the market. Novelty alone is not sufficient; the relevant criteria to consider is if the shape can serve as an indication of origin. This clearly underlines a remarkable difference from the requirements to apply on Community Designs.
In order to determine whether a shape of a product is commonly used in the market, the General Court found that simply determining what shape is statistically the most common is not enough and that all variations of the shapes used in the market must be taken into consideration.
When considering the mark in question, which consists of the shape of the goods, namely a lipstick, the General Court assumed the relevant public to have a medium- to-high-level of attention and found that the shape of the mark is uncommon and does indeed differ from the common shape of lipsticks in the market. The Court found that the shape was similar to a ship and that it would not be possible to stand the lipstick in question in an upright position which is different from all existing lipsticks in the market. Consumers would therefore be surprised by the design and perceive the shape to be different from the common shape of lipsticks.
With regard to examining the aesthetic qualities of a mark, the General Court outlined that such an examination is subjective and not relevant to assessing whether the shape of a sign enables differentiation between one commercial origin and another. The mark must be analysed with regard to whether or not it makes an uncommon impression.
Following from this assessment, the General Court ruled that the Boards of Appeal was mistaken when it assumed that the trademark lacked distinctive character and ordered the decision to be annulled.
Assessing whether or not a trademark differs from the norms and common shapes in the market remains a difficult issue and may depend on the particular market sector. Now, with the decision from the General Court, an additional relevant and rather predictable factor can be added to the assessment, which is whether a design includes a surprising element that will be perceived as different from the norm and will serve as an indication of origin. Neither novelty nor an aesthetically appealing design will be sufficient to fulfil the requirement of serving as an indication of origin.
In the present case, the Court found the surprising factor to be that the lipstick represented by the mark was designed in such a way to prevent it from being able to stand in an upright position.
To increase chances of three-dimensional trademarks being registered by the EUIPO, the chosen shape of the product should include uncommon features. In view of the restrictive practices of EUIPO it also is advisable to parallely file design registrations for the product and/or to seek protection with the trademark offices of the EU member states and to expand protection country-by-country.