Trade marks are signs that are capable of distinguishing the goods and services of one business from those of another. Achieving and maintaining registration of a trade mark provides a business with a monopoly right in the mark, and the associated goods and services, indefinitely (subject to periodic renewal of the right).
Trade marks are therefore valuable property assets and are something that businesses in the beauty and cosmetics sector should consider in relation to protecting brand, products, services and even packaging.
To gain protection, a trade mark must be non-descriptive, distinctive or have gained acquired distinctiveness through use. Protection can be sought for various forms, most commonly word marks and logos, including shape marks.
Shape marks
Difficulties can arise in seeking to prove distinctiveness when applying for protection of shape trade marks. Taking into account consumer buying habits, and in the absence of logos or word marks, it is argued that consumers do not tend to perceive shape alone as an indicator of the origin of the goods, or they do not tend to make assumptions about the origin of goods based on their shape or the shape of packaging alone. Rather, consumers might view and value the shape of the goods as a feature but seek clarity of origin from word marks or logos. In addition, by one business claiming a monopoly and potentially indefinite protection over a specific shape, there is the undesirable effect of limiting competition in the marketplace.
Although protection of shape trade marks can be difficult to achieve, it is not impossible. Where the shape differs from the norm, or where it is not the “usual” shape that the product in question takes in the relevant sector (such as the beauty and cosmetics sector), the shape mark is capable of acting as a badge of origin, thereby distinguishing the goods of one business from those of another, and so capable of functioning as a trade mark and achieving registered protection. However, proving the registrability of shape marks may sometimes be challenging.
Guerlain – Rouge G de Guerlain shape trade mark
On 14 July 2021, Guerlain, a French cosmetics business, successfully achieved a favourable decision (T-488/20 Guerlain) in its application for EU trade mark registration of its Rouge G lipstick case, after a long-held battle against the EUIPO.
Guerlain filed an EU trade mark application in 2018 for a 3D shape mark in connection with class 3 goods (non-medicated cosmetics) with the specification of lipsticks.
Guerlain’s trade mark application was initially refused by the EUIPO on the basis that it lacked distinctiveness in respect of the applied-for goods and was therefore incapable of operating as a trade mark. In response to the refusal, Guerlain relied on the fact that it had acquired distinctiveness in the shape mark, i.e. that through use of the shape in trade, the shape had become synonymous with Guerlain’s goods and therefore consumers had come to associate the shape mark with Guerlain alone. However, the EUIPO Examiner rejected the acquired distinctiveness arguments and found that the 3D shape did not sufficiently depart from the norms and customs of lipstick products in the cosmetics sector.
Guerlain appealed, however, the decision of the EUIPO Examiner was upheld at the First Board of Appeal of the EUIPO. The Board held that Guerlain’s mark lacked distinctive character and that, amongst other matters, “[lipsticks] all had a cylindrical shape and consumers were accustomed to containers in an oval shape” and that the mark “taken as a whole… does not depart sufficiently, still less ‘significantly’, from the norms and customs of the sector”.
Guerlain further appealed to the General Court of the European Union. In its judgment dated 14 July 2021, the General Court disagreed with the previous decision of the First Board of Appeal of EUIPO and annulled it. In particular, when finding in Guerlain’s favour the General Court concluded that the shape mark was not devoid of distinctive character, rather “the shape at issue is unusual for lipsticks and differs from any other shape on the market”. The shape of Guerlain’s lipstick case was described as “not ‘semi-cylindrical’” but “that of a boat or bassinet…” thus “that shape recalling the hull of a vessel or a bassinet may be regarded as fanciful for a lipstick and therefore departs significantly from the norms and customs of the sector concerned”.
The General Court therefore concluded that “the relevant public with a level of attention ranging from average to high will be surprised by that easily memorable shape and will perceive it as departing significantly from the norm and customs of the lipstick sector capable of indicating the origin of the goods concerned’. Guerlain’s shape mark for its Rouge G lipstick case was therefore found by the General Court to have distinctive character on the basis that it is sufficiently different from other lipstick cases that are found in the cosmetics sector.
Summary
It is notoriously difficult to achieve registered trade mark protection for shape marks but, as the Guerlain case demonstrates, it is not impossible.
To be in a position to argue that the shape is capable of trade mark registration, the shape must be different from the norm or customs of the sector. The shape must not result from the nature of the goods themselves, be necessary to obtain a technical result, or give substantial value to the goods. Further, the shape must be capable of fulfilling the essential function of a trade mark, such that it can indicate origin and distinguish the goods and services of one business from those of another. The Guerlain case demonstrates that creating shapes for cosmetic products that depart from the norm can satisfy that criteria and result in valuable intellectual property rights worth protecting. Cosmetics businesses should review their existing inventory to assess whether any of their products meet those same criteria.
Our Intellectual Property Team is able to advise on the inherent registrability of marks, including shape marks. Please do get in touch if you have any queries or would like to discuss your trade mark matters.
