Usually when people think of trade marks, they picture the names or logos of famous brands, ready to be put on a product or its packaging to serve as an instantly recognisable badge of origin. Sometimes, however, a trade mark can be something unusual about the product or packaging itself – that it has a unique shape, sound or even smell, can be hugely beneficial to strengthening a brand’s identity.
There are several drawbacks to relying on these types of properties as trade marks – for example, they tend to be determined by function, cost, and the conventions of the market, so trying to adapt them to make the product or packaging stand out from the rest of the market can lead to the product being less practical, more expensive, and overlooked or confused for a different type of product entirely. Further, unless the feature in question is eligible for e.g. registered trade mark protection, there is little to prevent competitors from following suit.
Although relatively uncommon compared to names and logos, registrations for non-traditional trade marks can be obtained in the right circumstances. The main thing to consider is whether the feature you are seeking to protect is distinct from both the product and your competition, either fundamentally (such that it is “inherently distinctive”) or failing that, as a result of extensive use and marketing (such that it has “acquired distinctiveness”).
Two appeals which came before the EU’s General Court in the last month serve as a useful reminder of what can make the difference when trying to protect less traditional trade marks, without having to rely on evidence of acquired distinctiveness.
In the first appeal1, a German company, Ardagh Metal Beverage Holdings GmbH & Co. KG, sought to overturn a decision issued by the Boards of Appeal of the European Union Intellectual Property Office (‘EUIPO’) to refuse their application to register a particular sound as a trade mark. It is worth noting that this is the first time an application based just on an audio file has come before the General Court - until October 2017, applications for sound marks had to include a graphical element, such as a musical score or written description of the sound.
Ardagh Metal specialises in producing beverage cans, enabling millions of consumers around the world to drink water, coffee, beer, pre-mixed cocktails or even wine whilst ‘on the go’. Their application consisted of the sound of a can being opened, followed by one second of silence and then a fizzing sound lasting about nine seconds. They did not dispute the Board of Appeal’s refusal of the trade mark for metal containers, but argued that consumers would find the silence and unusually long sound pattern to be unexpected and memorable for uncarbonated drinks including milk, juice, coffee, beer and wine.
The Court first confirmed that the basic criteria for assessing distinctiveness is the same for all types of mark, which, broadly speaking, surrounds whether it would be recognised as a specific brand, isolated from other word or logo elements, or as simply a functional or inherent characteristic of the product.
The Court then held the Board of Appeal had been wrong to apply the further criteria used for assessing shape marks, whereby the distinctiveness of a shape can be inferred from the extent to which it conforms to consumer expectations.
Nevertheless, it agreed with the Board of Appeal that the sound in question is generally associated with canned drinks and does not differ significantly between carbonated and uncarbonated drinks, and thus is incapable of acting as a trade mark for drinks or storage containers.
A week later the Court issued another judgment2, concerning an application by the French cosmetics and fragrance brand Guerlain to register the shape of a lipstick as a trade mark. As with the above sound mark, the application was initially refused protection by the EUIPO, a decision which had then been upheld by the Boards of Appeal.
The below image to the left shows the line drawings comprising Guerlain’s application, which they described later as resembling a bassinet or the hull of a boat.
It is worth noting that the assessment of the shape’s distinctiveness can only be made with reference to the images as originally filed. The image on the right below (filed later in evidence) thus does not form part of the application, although for our benefit it does more clearly illustrate the purported mark’s features. As can be seen, the lipstick is mounted on a curved base, so that it cannot be stood upright. Affixed to the base is a detachable upper case to protect the lipstick when it is not in use. More unusually, the upper case also incorporates a hinged lid which flips open when the upper case is detached to reveal a double mirror - although it was held that this feature could not be discerned from the line drawings.
Guerlain took the view that this particular shape taken overall should qualify as a distinctive and registrable trade mark. The Board of Appeal disagreed, judging that the shape did not differ significantly from standard cylindrical lipstick shapes already on the market, and that even if it did, it would just be perceived as semi-cylindrical variant of those existing styles. The added features were not considered dominant enough to counteract that perception.
However, the General Court agreed with Guerlain that the shape was in fact different enough from the normal lipsticks on the market for it to be memorable and capable of being associated with a particular brand.
In coming to its decision, the Court thoroughly examined each feature of the shape and its overall appearance, and accepted Guerlain’s argument that this resembles a boat or bassinet, as opposed to being semi-cylindrical, largely due to its lack of flat surfaces or right angles.
The small raised (button-like) oval shape between the base and the upper case was considered to contribute significantly to the shape’s unusual appearance.
The hinged lid and double mirror were not taken into consideration, as these features could not be inferred from the graphic representation applied for.
The Court also dismissed a substantial amount of evidence filed by Guerlain, consisting of articles, adverts and reviews praising its ‘revolutionary’ lipstick, as being irrelevant to the question of whether the trade mark as represented graphically was inherently distinctive. (The evidence would however have been relevant to an assessment of acquired distinctiveness, if Guerlain had been obliged to seek protection on that basis).
The Court also pointed out that a shape will not necessarily be registrable merely because it is new, unless that novelty serves to indicate the product’s origin.
Incidentally, whilst the appeals were ongoing, Guerlain had no apparent trouble obtaining registration for the shape in a separate trade mark application3, composed of the following photographic images rather than simple line drawings:
In summary, applicants wanting to protect an aspect of their product or its packaging as a trade mark should first determine whether the aspect is unusual or familiar for consumers of the market in question. In the case of a shape mark, they should also consider the customary shapes that one would expect to see in that market, ask themselves what makes their shape noticeably different (as opposed to just new or original), and be sure to clearly depict those differences in the images to be submitted with their application. Photographs may do this more effectively than traditional line drawings, although arguably offer a slightly narrower scope of protection against copycats. This is a complex and nuanced area of law, and we would be happy to advise clients on the potential registrability of any unusual trade marks they have.
1 Case T-668/19, Decision of the General Court of 7 July 2021 in Ardagh Metal Beverage Holdings v EUIPO
2 Case T-488/20, Decision of the General Court of 14 July 2021 in Guerlain v EUIPO