Tridimensional trademarks and distinctive character

The European General Court, with judgment of July 14, 2021 (cause T-488/20) annulled the EUIPO decision, which stated that the tridimensional sign constituted by the shape of a lipstick could not be registered as a trademark because of its lack of distinctive character.

In particular, the decision follows the filing made in 2018 by a renowned company operating in the cosmetic industry of the following tridimensional trademark application  for the goods “lipsticks” in class 3.

Following the rejection of the EUIPO Office, the company turned to the Board of Appeal which, however, confirmed the lack of distinctive character of the sign in exam and rejected the appeal.

According to the Board, the specific features of the trademark do not make it significantly recognizable from other shapes of lipsticks normally available on the market. The trademark therefore does not diverge sufficiently from the standards and the customs of the field to be registered as a tridimensional trademark.

The applicant addressed therefore the European General Court to ask for the annulment of the decision of the Board of Appeal.

Firstly, the General Court affirmed that “the evaluation criteria of the distinctive character of the tridimensional trademark constituted by the shape of the product itself are not different from those applied to the other trademark categories” and that “The closer the shape object of the trademark registration is to the most probable shape that the product in question will assume, the more it is likely that such shape will be lacking of distinctive character (…)”.

Only a trademark that significantly differs from the customs and standards of the field and that – consequently – absolves its function of identifying the good as produced by a certain company can be registered as a trademark.

The sole novelty of the shape is not sufficient to conclude that the distinctive character exists, because the decisive criterion is the ability of such shape to fulfill the function of indicating the commercial origin.

The aesthetic aspect of the trademark should not constitute an evaluation on the beauty of the good or lack thereof but it has to verify that it could generated an unusual visual effect to the eyes of the consumer as to make it recognizable from all the others.

The General Court, therefore, in light of the above-mentioned considerations, took into account the shape of the lipstick object of the trademark, which is not semi-cylindrical like in the majority of the lipsticks on the market.

The trademark has moreover a shape that evokes the hull or the cradle of a ship, differing thus significantly from the usual lipsticks packaging sold on the market.

The little embossed oval shape which allows to block or unblock the lipstick, moreover, is completely unusual for a product of this kind, contributing thus to increase further the distance from the “more usual” shapes. The tridimensional trademark has thus been considered as an imaginative shape for a lipstick, which differs in a significant way from the norms and customs of the interested field.

Therefore, considering that the target audience will be surprised by this easily memorable shape which will be perceived as a completely unusual sign compared to the customs and standard of the field, the General Court of the European Union concluded that the Board of Appeals made a mistake in its conclusions, considering on the contrary that the trademark has a distinctive character and can be therefore registered as a tridimensional trademark.