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16 May 2022

Moon Boot Kicked Out but Guerlain’s Lipstick Shapes Up

What are shape marks? Section 1 of the Trade Marks Act 1994 specifically includes “the shape of goods or their packaging” within the definition of a trade mark. It also provides that a mark must be “capable of distinguishing goods of one undertaking from those of other undertakings.” If a shape is common in the trade, or has become so, it cannot perform that essential function of identifying the brand owner. Consumers will simply see it as another example of the product in question and will use other visual markings, such as words or logos, in order to identify the brand.

Examples of “pure” shapes (without additional markings) which have made the grade include the shapes shown at 1 and 2 below registered respectively for chocolate and cereal preparations. Two recent decisions of the General Court of the European Court of Justice reached contrasting conclusions on whether the specific shapes under consideration could be validly registered marks.

Moon Boot

Tecnica Group SpA (Tecnica) registered the shape of its Moon Boot product in the European Union in 2011 for (among others) footwear and various parts of footwear, being soles, heelpieces and uppers. The registered mark is:

Tecnica successfully sued a Swiss company for trade mark infringement based on its EU registration and the defendant hit back, filing an action for the registration to be struck off. It claimed the mark was not capable of distinguishing trade origin in the marketplace and was invalidly registered. The Cancellation Division and Board of Appeal agreed. Tecnica took this to the General Court but lost again and its registration was partially cancelled insofar as the footwear goods were concerned. The decision is here.

The General Court referred to accepted principles in shape mark law. Critical here was the point that where a shape mark consists purely of the appearance of the product itself (without additional markings), it will only be allowed onto the register or to remain on the register if it departs significantly from the norms or customs of the sector. That conclusion does not require other identically shaped products to be on the marketplace.

It is a lesser test and the shape will fail if it is “similar to variants of the product which are usually available on the market”. Tecnica failed to clear this hurdle. Evidence of 15 or so other similar boots was presented. For technical reasons, Tecnica also failed in its attempt to file evidence of distinctiveness acquired through use of the mark which might have seen it over the line. Thus, despite arguably being the first and most famous aprés-ski boot of its kind, Tecnica’s shape registration was struck off. Its registration for the words MOON BOOT endures.

Rouge G lipstick holder

The French cosmetics house Guerlain fared better in its quest to register the shape of its Rouge G lipstick case. In 2018, Guerlain filed an EU trade mark application seeking registration for the shape of its lipstick case shown below:

The application was refused. As in the Moon Boot case, the norms and customs of the commercial sector were the relevant consideration. The EU trade mark office concluded at first instance and on appeal that the shape did not depart sufficiently from these. Consumers were used to seeing lipsticks packaged in multiple different shapes including oval and semi-cylindrical shapes. The Rouge G shape would not stand out; it would simply be perceived as another variant of these shapes and could not therefore exclusively identify lipsticks produced by Guerlain.

Guerlain disagreed and appealed to the General Court which found in Guerlain’s favour. The decision can be found here and here. The General Court stressed that mere novelty of a shape or a high-quality design does not automatically equate to trade mark distinctiveness. However, Guerlain’s shape was sufficiently different to others already on the market. The Rouge G shape was not, as claimed by the EU trade mark office, semi-cylindrical but instead reminiscent of a boat hull or bassinet.

It had no straight lines and could not stand up vertically. The “notch” was also an unusual feature. Accordingly, the shape was uncommon and differed from the sector norms even where the sector is already characterised by a wide variety of shapes. Consumers would be “surprised” by the easily memorable shape of this case which was therefore capable of indicating trade origin.

Comment

Shape marks are notoriously difficult to register but Guerlain’s success shows it is achievable provided the shape in question is sufficiently unusual and different from the sector norms. Once registered, it is important to police and enforce rights to ensure that protection is not eroded by similarly shaped marks entering the marketplace, as happened to Tecnica.

If that is done, the benefit of an ongoing shape trade mark registration is particularly powerful, not least because this protection can outlast patent, design, or copyright protection. It is potentially a very valuable addition to the intellectual property portfolio of a business.

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