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Brands: lipsticks and coffee capsules

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The shapes of products are traditionally protected by registered designs. But sometimes it is possible to register the shape of a product as a trademark. This is a delicate area of ​​trademark law, as consumers do not always perceive the shape of a product as a mark of origin, and the shape of the product is often utilitarian. Two recent cases from the EU illustrate some of these problems.

first case: the “revolutionary” lipstick

The French company Guerlain has filed a trade mark application in the European Union (EU) to register the shape of one of its lipsticks – there is a representation of the mark in this article, an article I found very useful. Read the article here.

Applications for shape marks rarely go smoothly and this was no exception. The application was rejected for lack of distinctive character, the argument being twofold. The shape does not deviate sufficiently from the norm, and consumers will not perceive the shape as an original badge, i.e. a mark. The case was appealed to the Board of Appeal, which upheld the refusal. But Guerlain persisted and brought the case before the Court.

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The General Court adopted a different point of view from that of the Board of Appeal. She considered the brand to be visually different from other lipstick products. Among the reasons:

  • The absence of flat surfaces, which means that the lipstick cannot stand up. The court described the shape of the lipstick as more like a boat or a cradle.
  • The presence of a hinge that opens like a mirror.

The court was apparently also impressed that the shape had been praised in the media, where it had been described as “revolutionary!” “

The court went on to say what the courts always say in these cases, which is that the test of distinctiveness for a shape mark is the same as for any other type of mark. Except that this is not really the case, because the authorities assume that consumers generally do not perceive the shape of a product or its packaging as a brand. This means that to be registrable, a form of product must in fact deviate significantly from industry norms and customs.

The court said that was the case here – the memorable shape of the lipstick would clearly be seen as something deviating from industry norms and customs. Consumers would therefore consider it to be an original badge. The trade mark application should therefore be allowed to continue.

case two: coffee capsules

If you’re someone who isn’t very picky when it comes to coffee, you may very well own a Nespresso. For the benefit of the uninitiated, having a Nespresso means you never have to dip a spoon into a pot of coffee. What this means is that you need to have a supply of capsules, with a single capsule making a single cup of tea. Nestlé, the company that brought you Nespresso, obviously makes capsules for Nespresso machines. But other companies have started making capsules that are compatible with Nespresso machines, and one of those companies is called Ethical Coffee Company.

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Nestlé has a 3D Swiss trademark registration for the shape of the Nespresso capsule. Registration dates back to 2000 and the company even had patents dating back to the 1970s, but those of course have expired. When Nestlé sued Ethical Coffee Company for trademark infringement, Ethical responded by contesting the trademark registration. The Swiss Federal Court ruled that the registration of the Nestlé trademark for the form of Nespresso capsules was invalid.

In reaching this conclusion, the court declared that the shape of the capsule is “technically necessary” for use on Nespresso machines, thus excluding it from trademark protection. In the process, he made reference to famous past cases involving Lego and Philips. The court also stressed that trademark law must adapt to the free market system, which means that alternatives to products must be assessed strictly. The finding of this court is in line with an earlier finding of the German courts, where a Nespresso registration was also canceled. This article was very helpful, find out more here.

a few words about South Africa

It should be noted that South African Trademark Law also prohibits technically necessary shapes. Article 10 (5) denies the registration of a “mark which consists exclusively of the shape, configuration or color of the goods where such shape, configuration or color is necessary to obtain a specific technical result, or results of the nature of the products themselves “.


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