The recent decision by the General Court in the so-called Moon Boot case (General Court 19 January 2022, Tecnica Group vs. EUIPO, T 483/20) raises once again the question whether it is worth protecting shapes as a trademark within the EU, because the statistics show that in challenges for lack of distinctiveness brought before the EUIPO Cancellation Division and its subsequent instances, the denial of the validity of 3D marks is the more (if not the sole) likely outcome.
The relevant EUTMR provisions and their settled case law
The applicable provisions are articles 4 and article 7.1. letter b) EUTMR and, according to settled case law, the criteria for assessing the distinctive character of three-dimensional marks consisting of the shape of the product itself are no different from those applicable to other categories of trademarks. However, the same settled case law goes further and, without referring to any specific provision of the EUTMR, restricts the application of said criteria as follows:
- For the purpose of applying those criteria, account must be taken that the average consumer’s perception is not necessarily the same in the case of a three-dimensional mark, which consists of the appearance of the product itself, in contrast with a word or figurative mark, which consists of a sign unrelated to the appearance of the goods it denotes.
- Average consumers are not in the habit of making assumptions about the origin of goods on the basis of their shape, or the shape of their packaging, in the absence of any graphic or word element, meaning it could prove more difficult to establish distinctive character in relation to such a 3D mark than a word or figurative mark.
- It follows that only a three-dimensional mark, consisting of the appearance of the product itself, which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin, is not devoid of any distinctive character for the purposes of Article 7(1)(b) EUTMR .
The lesson we can learn from the Moon Boot decision is that Guerlain was probably an illusion (General Court 14 July 2021, Guerlain vs. EUIPO, T 488/20): trademark protection of shapes within the EU is still a difficult task, because the criteria applied to assess the existence of a distinctive character are unclear :
- The legislative acknowledgement of the ability of shapes to indicate their commercial origin do not enable to provide even by negative inference the definition of norms and customs in the sector.
- The fact that novelty and originality are not sufficient to conclude that a distinctive character exists makes it difficult to protect even iconic shapes. Even more, the existing case law fails to provide the meaning of the principle found in § 48 of Guerlain according to which the norms and customs of the sector cannot be reduced to the only statistically most common form but include all the shapes which the consumer is accustomed to seeing on the market.
- The existence of a distinctive character provided the 3D mark conveys an overall impression departing significantly from the unspecified norms and customs in the sector adds additional confusion: namely, it leads to a 3D mark having a distinctive character on the basis of a design law criterion!
- The possible relevance of aesthetics (see Guerlain 43 and 44), as referring to the objective and unusual effect produced by the specific design of that mark, suggests the equation aesthetics=unusual effect, i.e., it is aesthetically relevant and may be taken into consideration regarding what reflects an uncommon usage. This means that it is aesthetically relevant what is other than … the customs and norms in the sector (like a dog chasing its tail!).
Written by Carlo Sala, Salalex.
 Under article 4 An EU trademark may consist of any signs, in particular words, including ….the shape of goods or of the packaging of goods ….provided that such signs are capable of:
- distinguishing the goods or services of one undertaking from those of other undertakings; and
- being represented on the Register of European Union trade marks (‘the Register’), in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.
Under article 7.1. letter b) trademarks which are devoid of any distinctive character shall not be registered and, under article 59, if registered, shall be declared invalid.
 see Court of Justice 7October 2004 Case C‑136/02 P Mag Instrument v OHIM paragraph 30.
 See Court of Justice 22 June 2006, Storck v OHIM, C-25/05, § 27 and the caselaw cited.
 See General Court 19 September 2012, T-50/11, § 40 and the case law cited.
 Court of Justice 12 January 2006, Deutsche SiSi-Werke v OHIM, C-173/04 P, § 31.