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Trade mark protection for shapes of products and packaging

Posted on 27 October 2021

Packaging and product design can have a significant impact on consumer purchasing decisions in the beauty and cosmetics sector. The look-and-feel of a product and the consumer experience while using it can be just as important to purchasers as the quality of the product itself. In a crowded marketplace, innovative product design also enables brands to stand out – like the stylish yet hygienic moisturiser dispenser favoured by Kate Somerville.

However, beauty dupes present a major ongoing challenge for beauty and cosmetics brands. This applies as much to product design as to underlying formulas (if not more so). As reported in the previous edition of Beauty Matters, Charlotte Tilbury was successful in enforcement action against Aldi on the basis of copyright protection in its 'Filmstar' bronzer and highlighter palette. However unregistered rights such as copyright can be challenging to enforce, and it is preferable to seek to protect important design shapes as (i) registered design rights; and/or (ii) trade marks.

Registered designs are relatively simple and cost-effective to obtain. Once registered they have a maximum term of 25 years, and while this may be a sufficient period of protection for some designs, it is much less than the shelf life of some iconic fragrance bottles. Moreover, the validity of these designs could be challenged for lack of novelty or individual character based on any prior design in the marketplace (not just on the register), and this can cause difficulty when it comes to enforcing those rights. Whilst registered design rights are still a valuable part of the brand protection armoury for packaging and product design, it is understandable that brands have also explored registering important designs as trade marks.

In contrast to registered designs, securing trade mark protection for product and packaging shapes is notoriously challenging. However, once registered, these trade marks can be protected indefinitely (renewable every 10 years). Although the validity of registered trade marks can be challenged post-registration, they are perhaps not as vulnerable as registered design rights. Further, they can be enforced against copycats and dupes, and also be used to prevent direct competitors coming too close to your signature designs. Therefore, once registered, trade marks which protect the shapes of products or packaging can become enormously valuable assets.

The difficulty is in actually securing trade mark registrations for shapes. Although the law is clear that in principle shapes are registrable, in practice the Registries and Courts have not readily granted protection. A minimum requirement for trade mark protection is that the mark is distinctive – i.e. that it is capable of acting as an indicator of origin. It is more challenging to establish this for shape marks – which consumers arguably are not used to perceiving as indicators of origin – than it is for more conventional trade marks such as brand names and logos. What is more, additional hurdles apply only to shape marks – shapes which derive from the nature of the goods themselves, which add value, or which are necessary to obtain a technical result, cannot be registered.

Two recent decisions by the EU General Court demonstrate the challenges in obtaining trade mark protection for shapes in the cosmetics sector.

Lip balm packaging

French skincare brand Eos Products ('EOS') failed to register the following spherical lip balm container as a 3D EU trade mark:

The application covered goods such as cosmetics and medicalised lip balm products, as well as receptacles, dispensers and applicators. The EU Intellectual Property Office (EUIPO) rejected the application in 2019 on grounds that the shape lacked the required distinctiveness to function as a trade mark, and this decision was upheld on appeal to the EUIPO Board of Appeal.

EOS lodged a further appeal to the General Court, arguing that the Board of Appeal had erred in finding that the application shape was customary for packaging in the cosmetics sector. The General Court rejected this argument (decision not available in English), finding that "the mere fact that that shape is a 'variant' of one of the usual shapes of this type of product not sufficient" to establish distinctive character. It also rejected EOS' claim that the mark had acquired distinctive character through use.

The General Court also rejected the argument that the relevant public for assessing distinctiveness would include professionals (e.g. distributors), who would exhibit a high degree of attention, as well as consumers. While some items such as applicators would be marketed at professional distributors, the definition of the relevant public is linked to the recipient of the goods themselves, "because it is in relation to them that the mark must develop its essential function". In any event, even where the relevant public is specialised, it does not necessarily follow that a weaker level of distinctiveness is sufficient.

Lipstick case

In contrast to the above, Guerlain has successfully appealed a refusal against the shape of its iconic Rouge G lipstick case as a 3D EU trade mark.

Guerlain had filed its application to register the lipstick case design as a 3D trade mark in 2018, covering only 'lipsticks' in Class 3. The EUIPO rejected the application on the basis that it lacked distinctive character, a decision upheld by the Board of Appeal.

Guerlain appealed to the General Court, arguing that the shape was more than a mere variation of the usual shape of lipstick cases on the market. The General Court confirmed that, to be registered, a 3D trade mark must diverge "significantly" from the norms and customs of its particular sector in order to be capable of fulfilling the essential origin function. The attractiveness of the shape is also relevant to whether it produces an "objective and unusual visual effect" on the relevant public.

In applying this test, the General Court decided that the mark resembled the unusual shape of a boat hull or a bassinet and was therefore different from the other lipstick cases on the market. In its view, the relevant public would be surprised by the "easily memorized shape". It therefore concluded that the mark is sufficiently distinctive to function as a badge of commercial origin.

The case will now be remitted back to the Board of Appeal to apply the General Court's favourable decision.

Conclusion

Whilst the favourable decision in Guerlain's lipstick case shows that it is possible to register the shapes of product or packaging designs as a trade mark, it also demonstrates that the shape must be a truly "significant" departure from existing designs which are the norm in the relevant marketplace

The decision concerning EOS' lip balm dispenser suggests that securing protection for product and packaging shapes as trade marks is still undoubtedly challenging. The threshold for what constitutes sufficient distinctiveness appears to be very finely balanced. Nonetheless, securing trade mark registrations for product and packaging designs which are iconic and central to your brand story will undoubtedly add value to your brand protection portfolio.

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