Don't put all your lip balms in one basket

After having recently ruled that the shape of Guerlain's "Rouge G" lipstick case could be registered as a trade mark, the General Court has denied registration to EOS's egg-shaped lip balm as a 3D trade mark.

In the Guerlain case, the Court had decided that the norms and customs of the sector cannot be reduced to what is statistically most widespread, but must instead include all the shapes that the consumer is accustomed to see on the market. Cylindrical shapes might be the most common ones, but they are not the only ones, and the fact that a certain sector is characterized by the presence of different shapes does not mean that a new possible shape should be regarded as a mere variation thereof.

The Court had concluded that the shape was unusual for a lipstick in that it reminds one of a boat hull or a baby carrier, thus differing from any other shape on the market. The target audience, with a medium to high level of attention, would be surprised by Guerlain’s easily memorized shape and would perceive it as significantly deviating from the norms and customs of the lipstick sector. 

In the present case, the Board of Appeal (ironically referring to evidence submitted by EOS) highlighted that round and spherical containers are common in the cosmetics market. EOS's evidence was then criticised as only covering part of the goods the mark was seeking protection for. Further, the Board of Appeal rejected some evidence as showing lip balms in various colours with the letters “eos",  whereas the mark is represented in black and white with no word element. Lastly, the quality of surveys submitted by EOS was criticised and considered insufficient as only covering Germany and Austria.

EOS then challenged the Board of Appeal’s decision on inherent distinctiveness by appealing to the General Court, who mainly confirmed the findings of the EUIPO and rejected the Application.

This decision is a somewhat harsh reminder of the importance of evidence in trade mark proceedings. As suggested in this article, "the result seems more about unconvincing argumentation and insufficient or belated evidence, rather than anything legally inherent in the applied-for mark".