Shape trade marks. Part 1: A scentsational development.

Part 1: A scentsational development

In the past, it has been challenging to register shapes as trademarks if they were ‘functional’ or looked like commonly used designs. However, some recent cases have shown that a product’s appearance can be eligible for trademark registration. Notably, it now appears that a shape can be used as a trademark in the market before applying for registration, which differs from design rights which require the shape to be new and unique at the time of application.

In part 1 of this 3-part series, we focus on perfume products, highlighting how the design of perfume bottles plays a crucial role in branding these products.

Taking shapes.

In a recent case in Europe [1], the EUIPO rejected a trademark application for the shape of a perfume bottle, claiming it lacked distinctiveness for the products. The decision was later overturned by the Board of Appeal.

Does a female torso lack distinctiveness?

In January 2023, Coscentra BV applied for trademark protection in the European Union for their 3D bottle shaped like a female torso, intended for perfumes (image below).

The EUIPO examiner rejected the application, stating that the design lacked distinctiveness because:

• the design was more decorative than indicative of the product’s origin.
• the bottle shape was just a variation of common perfume packaging and did not stand out in an industry known for diverse bottle shapes.
• Coscentra failed to provide enough evidence that the bottle had become distinctive through use.

Board of appeal’s decision.

Coscentra appealed the decision. The Board of Appeal disagreed with the examiner, claiming that a woman’s torso does not resemble typical features of perfume bottles and consumers would not see it as just another packaging design. They highlighted that the bottle’s unique features made it distinctive and allowed consumers to identify it as a specific brand.

The Board concluded that the torso-shaped bottle had original characteristics that helped distinguish it from other perfumes, fulfilling a key function of a trademark. They overturned the examiner’s decision, allowing the trademark application to move forward.

Implications for perfume makers.

The Board emphasized that, in the perfume market, bottle shapes can serve as indicators of brand origin. This decision creates opportunities for perfume companies to protect their uniquely designed products, particularly given that registering ‘scents’ can be challenging. It also highlights that companies should be made aware that eye-catching shapes which stand out in the market may be capable of supporting a trademark application.

[1] Coscentra BV v EUIPO (Case R0063/2024-5) of the EUIPO Board of Appeal.