Registration of three-dimensional trademarks sometimes is gambling without any guarantees for success.
Recently the General Court of the European Union has ruled in the case C‑672/21 P, Eos Products Sàrl v EUIPO, which targets this issue.
The US company Eos Products filed the following three-dimensional European trademark, which represents an egg-shaped lip balm package for classes 3, 5, and 21:
The EUIPO refused registration of the sign based on absolute grounds – lack of distinctive character. What’s more, the Office concluded that the shape of the products does not depart significantly from similar products in the market, which is one of the requirements for 3D signs to be successfully registered as trademarks.
The decision was appealed with the argument that the sign had inherent distinctiveness. In addition, the US company submitted evidence for acquiring one.
The Board of Appeal dismissed the arguments for the inherent distinctive character of the product finding that many other similar forms existed which was clear even from the paper submitted by the applicant itself.
For the acquired secondary distinctiveness, the Board concluded that evidence was insufficient. Eos Products gave example for the use of the lip balm container but for packages in different colors. This was in contrast with the way how the 3D mark was applied for – in white.
What’s more all of the submitted lip balm packages included the word part EOS. The available surveys concerned only Germany and Austria which was not enough in order acquired distinctiveness to be proved for the entire territory of the EU.
So registration of three-dimensional trademarks can be a real challenge. In another similar case, however, the applicant of 3D mark for the lipstick container Guerlain successfully overcame an initial refusal by the EUIPO.