Pankhuri Malik is an IPilogue Writer and an LLM Candidate at Osgoode Hall Law School.

 

EOS Products (“EOS”), the U.S. based proprietor of the egg-shaped lip balms since 2009, has failed in its attempt to have the shape of its lip balm registered as a three-dimensional (“3D”) trademark before the European Union Intellectual Property Office (“EUIPO”).

EOS applied for the mark’s registration in a black and white colour scheme in 2016. Having been refused registration by the examiner due to lack of distinctiveness, EOS pursued multiple appeals all the way up to the Court of Justice of the European Union (“CJEU”). The CJEU denied admissibility of EOS’s appeal in early February 2022.

Grounds for Refusal of Registration

EOS’ failure to have its mark registered could be equally attributed to legal hang-ups along with strategic errors. The examiner rejected EOS’ contention that the spherical mark is inherently distinctive. The examiner opined that the mark does not depart significantly from other shapes for similar products in the market, which is the EUIPO’s pre-requisite for registering 3D marks. The examiner also rejected EOS’ acquired distinctiveness argument, citing insufficient evidence.

On appeal, the EUIPO Board of Appeals (“BoA”) said that the shape of EOS’ lip balm, which is protected by multiple patents in the United States, is not distinct from other round and spherical containers that are common in the cosmetics industry. Ruling out inherent distinctiveness, it also noted that the evidence placed on record to demonstrate acquired distinctiveness was inadequate. The BoA said that the evidence contained the letters “EOS” on colourful balms, as opposed to the application which sought protection for a black and white container featuring no alphabetic characters. EUIPO’s examination guidelines dictate that letters present on 3D marks lends distinctive character to the mark.

EOS then appealed to the General Court solely on grounds of inherent distinctiveness. The General Court dismissed EOS’ appeal and reaffirmed the finding that the shape was not distinctive from other cosmetics in the market. As they did not argue acquired distinctiveness, it is unclear if EOS’ longstanding and extensive use of the shape would have supported its application with more compelling evidence.

To admit its appeal to the CJEU, EOS was required to show its importance for unity, consistency, and development of EU law. However, EOS failed to specify how the lower court’s decision inconsistently and inaccurately applied European Union law.

What Didn’t Work?

In its arguments before the General Court, EOS referred to the EUIPO’s recent Guerlain judgment (Case T-488/20), wherein the General Court held that the shape of Guerlain’s Rouge-G lipstick departs significantly from the norms and customs of the sector, and has an unusual visual impact on consumers. In coming to this conclusion, the Court held that a sector being characterised by a wide variety of product shapes does not necessarily mean that new shapes cannot be distinctive.

However, in EOS’ case, the Court disagreed that the egg-shaped lip balm differed significantly from the other products in the market. Falling into what I deem as a completely subjective sphere of analysis, EOS was unable to establish the prominence or distinctiveness of its mark.

Further, the absence of the letters “EOS” distinguishing the shape in the application, as it does on the product, did not help EOS’ case.  

What Do We Know Now?

It appears that EOS’ loss is not merely for lack of distinctiveness. Firstly, since being launched in 2009, the egg-shaped balm has come to be associated with EOS. If EOS strengthened its evidence, pulling data and resources from multiple countries, social media, and influencers who commonly reuse EOS’s distinctive shaped lip balms for DIY projects after the product has run out, could they have established acquired distinctiveness with more ease?

Secondly, in its appeal to the CJEU, could EOS have made a better case in comparing the impugned decision with the order in Guerlain, to show inconsistency in the Court’s approach?

For now, the 3D mark battle for EOS seems to have ended. Unfortunately, this development has left us with more questions than answers.