How to get your 3D trademark into shape

What lessons can aspiring shape mark owners learn from Guerlain’s victory at the EU General Court, in which a European Union Intellectual Property Office (EUIPO) appeal board’s refusal to register their famous lipstick case as a 3D trademark was overturned?

While some commentators have speculated that this decision may signal a new approach from the General Court that may now be more accepting of unconventional trademarks, it is worth bearing in mind the very specific industry context of this decision.

Perhaps the most important lesson from this decision is that anyone seeking to register a 3D shape mark for packaging must know their market (and their customer base) very well.

Standing out in a crowded marketplace

Lipsticks—and cosmetics more generally—are an example of a product category in which packaging is particularly important for distinguishing products from their competitors. Because the shape of the lipstick itself is primarily functional, rival brands will often be similar in appearance, and an eye-catching design for the outer lipstick case is an important factor in making a brand stand out.

For this reason, the design of lipstick cases varies wildly, which is important for the purposes of assessing the “distinctive character” of proposed trademarks because, as the General Court observed, consumers do not normally associate a particular packaging shape with the origin of a product. However, in a sector where packaging is a key part of brand differentiation, consumers will be more alert than usual to the possibility of a distinctive shape of goods functioning as a badge of origin.

“While it is not the only obstacle to registering a 3D shape mark, establishing a ‘distinctive character’ is an important hurdle to clear.”

Of course, as the General Court also emphasised, this does not mean that any unique packaging shape is capable of functioning as a trademark. When a sector is characterised by a wide variety of different packaging shapes, it is important to compare the proposed mark, not only to the most common shapes, but against all of the shapes that the consumer can be expected to be familiar with. Just being a “variant” of a more common design is not necessarily fatal to shape mark validity, but the crucial question is whether or not the shape is capable of producing an “objective and unusual visual effect” in the minds of the relevant consumers.

Making an impact

There are two points to unpack here—the first is that it is the opinion of the average consumer which counts, not the media, reviewers or any other class of specialists or experts. Guerlain brought extensive evidence that their case design had been welcomed by certain media commentators as “revolutionary”, but this was deemed irrelevant. At most, such positive reviews could demonstrate that the design was novel—they did nothing to prove it was capable of acting as a trademark to average consumers.

Second, the reference to an “objective” perspective is also important, as it emphasises that the key consideration is not the beauty or quality of the design, which are (at least in part) subjective. What matters is that the shape departs significantly enough from the “norm or habits of the sector” to fulfil the primary function of a trademark – serving as a reliable indicator of the origin of the goods.

That being said, while there is no requirement that an unusual packaging shape must be beautiful, purely aesthetic factors can be used as evidence that the design produces an “objective and unusual visual effect”, especially if those aesthetic factors are what mark the shape out as unusual in the sector.

For Guerlain’s lipstick case, the General Court placed weight on the fact that it resembled a “boat hull or bassinet”, which it found to be “fanciful” and “easily memorised”, and on the fact that its curved edges did not allow it to be stood up vertically. This second factor was found to reinforce the “unusual visual effect” and to result in the relevant consumers being “surprised”, which appears to have been key to the ultimate finding that Guerlain’s case design deviated significantly from the “norm and habits of the lipstick sector.”

Lessons from lipstick

So where does this leave other manufacturers who use unusual packaging, and who might one day hope to register that design as a shape mark?

The first takeaway is to remain focused on the consumer. It is all very well to come up with a packaging design which is praised by critics, or acclaimed as original or even unique, but these things count for little in the context of trademark validity. What is far more important is whether ordinary consumers are using the packaging shape to identify your product as originating from your business, as a kind of visual shorthand for the brand itself.

A packaging design that is in some way radical, surprising or even shocking is much more likely to produce an “objective and unusual visual effect” and be easily remembered in the minds of the relevant consumers, as compared to a design which might be aesthetically much more appealing but remained close to the established “norms and habits” of the relevant sector.

This leads to the second takeaway from Guerlain’s success—in order to maximise your chances of registering a 3D shape mark for your packaging, it is necessary to intimately understand the packaging status quo in your sector and then consciously break from it, ideally as dramatically as possible.

While a detailed understanding of competitors’ products is of course an important part of any kind of successful product design, it is especially important for the purposes of demonstrating that established design norms exist in your sector, and that your product significantly deviates from them. While it is not the only obstacle to registering a 3D shape mark, establishing a “distinctive character” is an important hurdle to clear, and the more unusual your design, the greater the chances of success.

William Hillson is an Associate at Powell Gilbert LLP. He can be contacted at:  william.hillson@powellgilbert.com

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