Introduction
Background
Facts
Decision
Comment
On 14 July 2021 the General Court rendered a decision on an application for registration of a 3D EU trademark consisting of the shape of an oblong lipstick case that was flat on one side and that had rounded ends.(1) The mark sought protection for lipsticks in class 3 and had an application date of 19 October 2018.
The EU Intellectual Property Office (EUIPO) had refused the registration and the refusal had been upheld by the Boards of Appeal of the EUIPO based on absolute grounds for refusal – namely, a lack of distinctive character.
However, the General Court decided that the shape of the 3D mark significantly departed from the norms and customs of the lipstick sector and that it had a distinctive character. Therefore, the refusal based on article 7(1)(b) of the EU Trademark Regulation (2017/1001) was unjustified.
According to article 4 of the EU Trademark Regulation, a trademark may consist of any sign, including the shape of goods or the shape of the packaging of goods.
So far, only approximately 0.36% of the trademarks registered with the EUIPO in 2021have been 3D marks. A total of 1,973,142 trademarks have been registered with the EUIPO in 2021 so far(2) and approximately 7,193 of these trademarks were 3D marks.(3)
Relevant absolute grounds for refusal are stipulated in article 7(1) of the EU Trademark Regulation. Pursuant to article 7(1)(e), a trademark cannot be registered if it 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;
(iii) the shape, or another characteristic, which gives substantial value to the goods.
Article 7(1)(b) of the EU Trademark Regulation provides that 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 3D trademark application based on article 7(1)(b) of the EU Trademark Regulation because the mark had been found to be devoid of distinctive character.
The applicant had requested that if the decision to refuse the mark became final, it would nevertheless be registered based on an acquired distinctive character. In view of the General Court decision, the applicant's request seems to be no longer relevant.
Boards of Appeal
The application was initially refused on 21 August 2019 and the applicant appealed the decision. The First Boards of Appeal upheld the refusal on 2 June 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 it was assumed that the mark differed from all types of lipsticks, it is still common that different shapes are offered and the trademark would be perceived only as a variation of the common shape. Therefore, the mark did not sufficiently differ from the shape that is common in the market.
General Court
With regard to the assessment of the distinctive character of a 3D 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(1)(b) of the EU Trademark Regulation. A 3D 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 whether the shape can serve as an indication of origin. This clearly underlines a significant difference from the requirements that apply to Community Designs.
To determine whether the 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 considered.
When considering the mark in question, which consisted of the shape of the goods – namely, a lipstick – the General Court assumed that the relevant public had a medium-to-high level of attention. It further found that the shape of the mark was uncommon and differed from the common shape of lipsticks in the market. The General 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 was 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 it makes an uncommon impression.
Following this assessment, the General Court ruled that the Boards of Appeal had been mistaken in assuming that the trademark lacked distinctive character and ordered the decision to be annulled.
Assessing whether 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 this decision from the General Court, an additional relevant and rather predictable factor can be added to the assessment – namely, whether a design includes a surprising element that will be perceived as different from the norm and 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 General 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 the chances of 3D trademarks being registered by the EUIPO, the chosen shape of the product should include uncommon features. In view of the restrictive practices of the EUIPO, it is also advisable to:
- file design registrations for the product;
- seek protection with the trademark offices of the EU member states; and
- expand protection country by country.
For further information on this topic please contact Jantje Agena at Grünecker by telephone (+49 89 21 23 50) or email ([email protected]). The Grünecker website can be accessed at grunecker.de.
Endnotes
(2) See EUIPO Statistics for European Union Trademarks 1996-01 to 2021-06 Evolution, 5.1. – 2/2.
(3) See EUIPO Statistics for European Union Trademarks 1996-01 to 2021-06 Evolution, 5.2. – 1/1.