EOS lip balm no 3D trademark - appeal before ECJ not admissible

The EOS lip balm is an eye-catcher – yet its registration as a European 3D trademark was refused, most recently before the CFI. Now, the ECJ has ruled in this matter: plaintiff EOS (Luxembourg) failed in its appeal against the CFI ruling – and therefore in its registration as a 3D trade mark.

EOS – known for colourful egg-shaped lip balm

EOS Markenanmeldung — Representation of the EOS trademark application

The applicant and plaintiff before the ECJ is Eos Products Sàrl (Luxembourg); however, Eos Products is better known as a US company for concise, very colourful egg-shaped lip balm. According to press reports, however, the US company Eos Products withdrew from Europe in 2020.

Years earlier, in 2016, Eos Products Sàrl (Luxembourg) applied to the EUIPO for a representation of the EOS egg-shaped lip balm as a 3D mark in black and white – for Nice classes 3 (including lip balms without medicines), 5 (including lip balms with medicines) and 21 (including containers for cosmetics).

EOS lip balm rejected as a 3D trademark

Both the examiner and the Board of Appeal refused to register the trade mark on the grounds of lack of distinctive character, and the European Court of First Instance (CFI), which was subsequently seised, also confirmed the refusal to register the trade mark (T-489/20). The Board of Appeal had rightly held that the trade mark applied for was devoid of distinctive character for these goods, the CFI ruled in 2021.

In its judgment, the CFI pointed out that, according to the case-law, the average consumer attaches to the presentation of a product, in so far as it is a compulsory selling requirement, primarily only that function. Accordingly, a three-dimensional mark consisting of such a presentation has distinctive character only if it enables the average consumer of the goods claimed, who is reasonably well informed and reasonably observant, to distinguish them from the goods of other undertakings without paying particular attention.

However, according to the CFI, the characteristics relied on by the applicant did not allow the shape represented by the mark applied for to be distinguished from the standards or customs of the sector.

It was primarily on this reasoning of the CFI that Eos Products Sàrl (Luxembourg) referred in its action before the European Court of Justice (ECJ), which has now ruled on the matter in February 2022 (C-672/21 P).

It accused the ECJ of applying legally erroneous standards when assessing distinctiveness, in particular with regard to the unusual visual impact in the eyes of the relevant public and the degree of deviation of the shape from customary practices and standards in the sector.

In particular, the applicant referred to the CFI’s Guerlain judgment (T-488/20) of July 2021, in which an “unusual visual impact”, according to the CFI, was the decisive factor in considering a shape of a lipstick to be registrable as a 3D mark – including in Nice Class 3. On the other hand, the EOS lip balm, although known for its very colourful egg-shaped form of its container, was to be considered unregistrable. According to the plaintiff this led to considerable ambiguity and legal uncertainty as to which requirements had to be met to prove that a three-dimensional EU trade mark deviated significantly from standards or customs in the relevant sector of goods due to unusual visual effects.

Therefore, the applicant asked for the judgment of the CFI to be set aside (T-489/20) – but in vain.

ECJ: Appeal not admissible

The ECJ first considered on the admissibility of appeals against a decision of the General Court concerning a decision of an independent Board of Appeal of the EUIPO. The highest European court pointed out that such an appeal would only be allowed if it raised a question of importance for the unity, consistency or development of Union law (according to Article 58a(3) of the Statute of the Court of Justice).

However, it was not sufficient, the ECJ ruled, to allege that the CFI had applied erroneous standards for the assessment of distinctiveness and the requirements of proof. This was because the applicant had been arguing in general terms that the contested judgment led to a lack of legal certainty with regard to the burden of proof and presentation with regard to the distinctive character of a three-dimensional mark.

However, the applicant should have explained clearly and precisely which legal issues were specifically relevant to the unity, consistency or development of EU law, and why the legal issues were relevant to those criteria.

Furthermore, the applicant did not explain what exactly the error of law allegedly committed by the European Court (the CFI) consisted of. In order to do so, the paragraphs of the judgment under appeal to which the appeal relates should have been identified and explained, the ECJ explained.

Therefore, the appeal was not admissible, the ECJ ruled. Ultimately, the applicant Eos Products Sàrl (Luxembourg) thus also failed to obtain the desired registration as a 3D trade mark for egg-shaped lip balm.