Non-conventional Marks – A Significant Departure in Lipstick Design
3D marks, position marks, pattern marks – what do these non-conventional types of trade marks have in common? They are notoriously difficult to register. European trade mark authorities have been quite unfriendly towards them in recent years, rejecting tech-related 3D marks such as the Logitech microphone shape (EUIPO Board of Appeal case R 2630/2019-4), as well as fashion-related applications like the Birkenstock sole pattern (ECJ case C‑26/17 P) and the Buffalo plateau sole position mark (EUIPO Board of Appeal case R 2167/2019‑1), just to name a few. Across the pond, the shoe and clothing manufacturer Timberland has been in the news recently for struggling to register the shape of its iconic yellow boot which originated in the 1970s. While US trade mark law usually rejects these applications based on the concept of “functionality”, which means the feature is considered essential to the use or purpose of the article, the concept determining protectability in EU law is framed slightly differently: Distinctiveness of these types of marks is only affirmed when they depart significantly from the shapes and patterns usually found in the relevant market sector.
Against this background, a recent decision by the General Court granting the French cosmetics brand Guerlain trade mark protection for the shape of its lipstick is a welcome surprise for companies eager to protect the shape of their product and further clarifies the standards set out above (GC, T-488/20 – Guerlain).
Guerlain first sought registration for the shape of its lipstick in 2018, applying for protection of the following 3D sign for “lipsticks” in Class 3:
The EUIPO rejected the application, stating that the shape applied for did not diverge significantly from the norms or customs of the sector (i.e. the lipstick market) and was thus lacking distinctiveness, within the meaning of Article 7(1)(b) EUTMR. As is common in such applications, Guerlain had also submitted a subsidiary claim of acquired distinctiveness under Article 7(3) EUTMR, but it remained unexamined due to the subsequent appeals.
In Guerlain’s first appeal, the First Board of Appeal (2292/2019-1) agreed with the Examiner, regarding the applicant’s sign as a variation of the typical cylindrical shapes of lipstick cases on the market. The Board of Appeal used the pictures below as a representation of the designs it found to be typical:
Guerlain, being convinced of the uniqueness of its lipstick’s shape, went on to appeal this decision to the General Court.
At the outset, the Court emphasised that (inherent) distinctiveness in 3D marks is not judged in terms of originality, and certainly not on the success of the mark in the marketplace. Instead, the Court said, the 3D sign must consist of the shape of a product that diverges significantly from the norms or customs of the relevant market sector. While aesthetic appearance may be taken into account, it is only within the framework of the “significant departure” requirement – namely if the aesthetic appearance produces an objective and unusual visual effect in the eyes of the relevant public. It is, however, not a decisive criterion per se.
The Court next addressed the existing norms and customs of the lipstick market. It agreed with the Board of Appeal that cylindrical shapes might be most widespread. It criticised the Board’s underlying reasoning, however, stating that the norms and customs of the sector cannot be reduced to the statistically most widespread form, but must instead include all the shapes that the consumer is accustomed to see on the market. The fact that the relevant sector is characterised by the presence of certain shapes does not mean that a new possible shape should be regarded as a mere variation of it.
In comparing the 3D mark with the images considered by the Board, the Court concluded that the applicant’s shape is unusual for a lipstick because it is indeed non-cylindrical, cannot be positioned upright on a flat surface, and reminds one of a boat hull or a cradle. Accordingly, it differs from any other shape on the market. The relevant public with a level of attention ranging from medium to high will be surprised by Guerlain’s easily memorized shape and will perceive it as significantly deviating from the norms and customs of the lipstick sector. The Board was thus incorrect in denying that the shape applied for possesses distinctive character.
It remains to be seen whether this decision is just an outlier or signals a slight change in the previously strict assessment of non-conventional marks. In any case, the judgment fleshes out the decisive criterion of the “significant departure from the norms and customs” and seems like a reasonable interpretation of Article 7(1)(b) EUTMR and the case law on non-conventional marks.