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

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

. 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

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

On appeal, that the shape of EOS’ lip balm, which is protected by 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 dictate that letters present on 3D marks lends to the mark.

EOS then appealed to the General Court solely on grounds of inherent distinctiveness. The 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 . 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 (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, 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. Ěý

What Do We Know Now?

It appears that EOS’ loss is not merely for lack of distinctiveness. Firstly, since being launched in 2009, the . 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 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.

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Emily Xiang is an IPilogue Writer, President of the Intellectual Property Society of Osgoode, and a 2L JD candidate at Osgoode Hall Law School.

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What is Bioprinting?

is an innovative technology that uses cells, organic materials, and biological molecules to create complex models and structures. Its is forming organic tissue constructs with a high degree of repeatability, flexibility, and accuracy. Since its first breakthrough in the health and pharmaceutical industries in the 2010s, the application of 3D bioprinting has grown to include , , , , and . In 2021, the global 3D bioprinting market was valued at and is expected to grow from there.

3D Bioprinting in the Cosmetics Industry

The use of bioprinted tissue by cosmetics companies has seen tremendous growth in recent years. In Europe, following the which banned animal testing for cosmetic purposes, cosmetics companies have had to seek alternative methods of ethical testing on varying skin types that would also produce accurate results. ĚýMoral advantages are not the only kind of benefit that bioprinting technologies can offer. Since human skin is multilayered and comprised of various cell types, 3D bioprinting presents the unique ability to deposit cells in meticulous arrangements that closely resemble actual human skin, resulting in and faster, cheaper, and more effective testing procedures. Since 3D bioprinting entered the marketplace, global cosmetic leaders such as and have invested significantly into the R&D of bioprinting technologies, with a view to revolutionize the practice of dermatology in the future.

3D Bioprinting & Canadian Patent Law

From an intellectual property law perspective, could 3D bioprinted material be patented? While the scope of patentable subject matter in Canadian patent law is generally considered Ěýquite broad, products and techniques related to bioprinting between the living and the non-living, which could complicate matters. In , the Court held that “higher life forms,” such as genetically modified plants or animals, were not patentable but affirmed the patentability of the genetically modified genes in question. Since the decision, the Canadian Patent Office has more clearly delineated the distinction between higher and lower life forms in the , which defines lower life forms as unicellular and higher life forms as being multicellular. In Chapter 17.02.02 of the MOPOP, the Patent Office states that “[a]rtificial organ-like or tissue-like structures that are distinct from true tissues and organs and that have been generated by human intervention through the combination of various cellular and/or inert components may be considered, on a case-by-case basis, to be manufactures or compositions of matter with the scope of section 2 of the Patent Act.”

While some ambiguity remains regarding the patentability of bioprinted materials, there has been some success in patenting associated with bioprinting. Despite these patents, however, bioprinting technology can still be said to be distinct from, for example, more cutting-edge , for which the core of the technology can be patented and can thereby lead to intellectual property disputes. In contrast, the core elements of bioprinting derive from that are already free from patent protection, providing innovators working with bioprinting technology some more leeway to appropriate the existing methodologies in the field.

Conclusion

While cosmetics companies constitute some of the more recent actors to leverage the new technology, bioprinting has gained in the industry in recent years, with interest no longer being restricted to academic circles but also gaining traction in the marketplace. As the research and development of 3D bioprinting continues to evolve, the need for the law to take a more explicit stance on the subject matter will become increasingly apparent.

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INITIAL REFUSAL BY THE USPTO

On July 24, 2019 and August 28, 2019, the USPTO responded to the and to the with initial refusals.

With respect to the pink-lined box trademark application, the USPTO argued that the colour mark was not inherently distinctive. As stated by the USPTO, colour marks are never inherently distinctive and can only be registered if there is sufficient proof of acquired distinctiveness. This was not the case for Glossier. Specifically, the Office points the applicants to different versions of pink-branded boxes sold with beauty and cosmetic products, including various goods from . Since consumers are accustomed to seeing the colour pink used on packaging for cosmetic and beauty goods, the USPTO states that consumers are likely to believe that the pink colour is a decorative feature, rather than attributable to a particular owner.

The pink bubble wrap was also refused by the USPTO, specifically due to the fact that the packaging appears to be a functional design, as outlined in of the US Trademark Act. The applicant’s specimen demonstrates that the circles that appear on the packaging are a type of cushioning that is generally used as a protective feature for the goods being stored. Therefore, a central feature of the packaging has a specific utilitarian function. Further, the Office notes that the mark consists of a non-distinctive configuration of packaging that is not registrable without sufficient proof of acquired distinctiveness. 

MODERN BRANDING

With the increase of social media and influencer marketing, brands continue to distinguish themselves from competitors based on the packaging of their products. When sending products to influencers and public figures, companies are aware that the “” process may be shared on the influencer’s social media feed, likely reaching  a large number of highly engaged followers. If the product that is sent is promotional or advertised, a video of the influencer unboxing the goods may even form part of the sponsorship agreement.

Brands use this unboxing experience as a way to reach new and existing consumers. This is especially relevant with respect to millennial consumers. It is unsurprising that brands like Glossier, who have built an identifiable, prevalent and consistent brand image, are seeking trademark protection for their investment in their product packaging.

WHAT’S NEXT?

Although the both of the Glossier’s marks have been refused registration, Glossier may respond to the refusals contained in the USPTO office action by submitting evidence and arguments in support of registration within six months. Given the increasing and prevalent use of product packaging to appeal to consumers and define a brand’s image, it is likely that trademark applications such as Glossier’s will continue to be filed in the USPTO and in other jurisdictions, including in Canada.

Written by Alessia Monastero, IPilogue editor and articling student at Deeth Williams Wall LLP.

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