Don’t put all your lip balms in one basket – Intellectual property

UK: Don’t put all your lip balms in one basket

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After having recently ruled that the shape of Guerlain’s “Rouge G” lipstick case could be registered as a trade mark, the Court decided refusal to register egg-shaped lip balm from EOS as a 3D mark.

In the Guerlain case, the Court had decided that the standards and practices of the sector cannot be reduced to what is statistically the most widespread, but must on the contrary include all the forms that the consumer is accustomed to seeing on the market. Cylindrical shapes are perhaps the most common, 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 possible new shape should be considered as a simple variation of it.

The Court had concluded that the shape was unusual for a lipstick in that it resembled 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 memorable shape and would perceive it as a significant departure from the norms and practices of the lipstick sector.

In the present case, the Board of Appeal (referring ironically to the evidence presented by EOS) pointed out that round and spherical containers are common in the cosmetics market. EOS’s evidence was later criticized as covering only part of the products for which the mark sought protection. In addition, the Board of Appeal rejected certain evidence such as showing lip balms of different colors with the letters “eos”, whereas the mark is represented in black and white without any verbal element. Finally, the survey quality submitted by EOS was criticized and deemed insufficient as it only covers Germany and Austria.

EOS then challenged the Board of Appeal’s decision on intrinsic distinctiveness by appealing to the General Court, which mainly upheld EUIPO’s conclusions and dismissed the application.

This decision is a somewhat harsh reminder of the the importance of evidence in trademark procedures. As suggested in this article, “the result seems more to be unconvincing argument and insufficient or late evidence, rather than something legally inherent in the mark applied for“.

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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