EU court rejects cosmetics maker’s ‘indistinctive’ 3D shape sign
An EU court has rejected a French skincare company’s bid to reverse the European Union Intellectual Property Office’s rejection of a three-dimensional (3D) ovoid-shaped sign.
The sixth chamber of the EU General Court handed the win to EUIPO yesterday, Wednesday, September 8, in Luxembourg on the grounds that the shape sign lacked sufficient distinctive character.
Background
In October 2016, French skincare brand Eos Products applied to the EUIPO to trademark a 3D sign consisting of the form of a spherical container.
The disputed signs consisted of a white spherical or ovoid shaped object (depending on the point of view), with a smooth surface, a flattened bottom, a recessed notch on one side and a horizontal dividing line in the middle.
The sign was intended to cover a range of goods including cosmetics, medicalised lip balm products as well as receptacles, dispensers and applicators.
In July 2019, the EUIPO examiner rejected the application, after which the applicant lodged an appeal with EUIPO against the decision.
In June 2020, the Fourth Board of Appeal of EUIPO dismissed the appeal, holding that the mark considered that the mark applied for was devoid of any distinctive character. The board also considered that a distinctive character acquired through use had not been proven.
On appeal, Eos said that it wished to limit the application for registration, to the products falling in Class 21, including “receptacles for lip care; lip care dispensers; labial care applicators”.
According to the applicant, such a limitation of the application for registration was admissible at any stage of the procedure.
But EUIPO challenged this admissibility, which was upheld by the court as such a “limitation would change the subject-matter of the dispute during the proceedings”.
The court stated that this was because the Board of Appeal, in the contested decision, examined the intrinsic distinctive character of the mark applied for in relation to the containers, applicators and distributors for cosmetics, in accordance with the applicant's application.
Attention to ‘inexpensive products’
On appeal, the French company argued that the board misapplied the principles that the registration of a mark required only a minimum distinctive character and the assessment must be made on the basis of public perception and specific market conditions.
The Board of Appeal held that the products falling within class 3 (cosmetics) were addressed to all consumers, that the products falling within class 5 (medicalised products) could also be addressed to the professional medical public and that products falling within Class 21 (receptacles, dispensers and applicators) could also be aimed at the professional public of cosmetics manufacturers.
Eos claimed that the board failed to take into account that all the products are aimed not only at all consumers but also at professionals, the products falling within Class 3 also being purchased by distributors who resell them in the wholesale or retail trade. It argued that an audience made up of professionals would present a higher level of attention.
But the court countered that it would be wrong to consider that the relevant public shows a lower than average level of attention because these are inexpensive products, and that on the contrary, the level of attention would be higher, since the average consumer of medicated or non-medicated lip balms would be more informed, more attentive and more savvy than the average person.
“In such a market, characterised by many products and manufacturers, end consumers would pay particular attention and would be attentive to details relating to both the external appearance and the composition of the products. The same would apply to cosmetic containers, dispensers and applicators. Unusual shapes would make it possible to distinguish competing offers,” found the court.
Variant shapes ‘not distinctive’
Eos also claimed that the board's assessment that the shape represented in the mark applied for did not differ from other forms of packaging customary in the sector was incorrect.
But the court refuted the applicant's arguments, contending that criteria for assessing the distinctive character of three-dimensional marks consisting of the shape of the product itself are no different from those applicable to other categories of marks.
“Indeed, average consumers do not usually assume the origin of products based on their shape or that of their packaging, in the absence of any graphic or textual element,” said the court.
“It follows that, when a three-dimensional mark consists of the shape of the product for which registration is sought, the mere fact that that shape is a 'variant' of one of the usual shapes of this type of product not sufficient to establish that the mark is not devoid of distinctive character.”
It also found that novelty or originality are not relevant criteria for the assessment of the distinctive character of a mark, so that, for a mark to be registered, it is not sufficient that it is original. It also must be substantially different from the basic forms of the product in question, commonly used in trade, said the court.
The court found that the board was correct to find that, in the cosmetics sector, there were packaging with very varied shapes, including round or spherical containers, and that the shape of which represented in the mark applied for was not significantly different.
It determined that the shape represented in the mark applied for does not differ significantly, as a whole, from the standard shapes in the sector, where lip care products are contained in more or less cylindrical packaging, rounded or flattened.
In addition, the court found that the characteristics of the sign, such as the flattened base, the horizontal line and the recessed notch do not stand out in its overall perception and rather merge with its functional characteristics, so that they are not likely to give it a distinctive character.
“It is devoid of any element capable of attracting the attention of the consumer and allowing it to be perceived as indicative of a given commercial origin,” stated the court.
The court found in favour of EUIPO and Eos was ordered to pay costs.
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