In the middle of last month, the EU General Court ruled on the question, whether the shape of a lipstick case can function as a trademark. The judgment reverses an earlier, negative decision of the EUIPO First Board of Appeal against the application filed by Guerlain for a registration of the shape (below) of it’s Guerlain Rouge G lipstick as a 3D trademark in Nice class 3. The court held, that the “boat hull or a baby carriage”-like design of the lipstick case is distinctive and can therefore be registered for protection.

Source: EUIPO Board of Appeal Decision

Earlier, the EUIPO denied Guerlain a registration, claiming, that the case was non-distinctive in the sense of Art. 7 (1) (b) EUTMR. In the unsuccessful appeal proceedings, the Board of Appeal considered that the shape applied for would not depart significantly from the norms or customs of the sector. The applicant’s sign was deemed a simple variation on the shapes of lipstick cases normally available on the market. Guerlain appealed again and has now won a positive decision by the EU General Court.

Originality, Novelty and Distinctiveness

The judges held first, that, with regard to the applicant’s argument concerning the highly successful aesthetic appearance of the shape at issue, the fact that goods have a quality design does not necessarily mean that a trade mark consisting of the three-dimensional shape of those goods is a priori capable of distinguishing those goods from those of other undertakings within the meaning of Article 7(1)(b) EUTMR. Trademark law (as opposed to copyright or design law), does not require originality or novelty. But it is necessary – especially for trademarks constituted by the shape of packaging – that the public sees more than simple packaging, beautiful as it may be, but a hint to the proprietor of the product.

However, it can also not be ruled out, that the aesthetic aspect of a trade mark in the form of the packaging of a product – in this case its container – may be taken into account alongside other aspects in order to determine a difference from the norm and customary in the sector. However, it must be provided that the aesthetic aspect is understood as referring to the objective and unusual visual effect created by the specific design of the mark. The main point to be proven is, whether the mark is capable of producing an objective visual effect, which is unusual in the eyes of the relevant public.

On this topic, the court rejected the Board of Appeal’s reasoning, stating that the standard and customary nature of the sector cannot be reduced solely to the shape which is statistically the most common (in this case cylindrical shapes), but encompasses all the shapes which the consumer usually encounters on the market.

What makes this case special?

The Board of Appeal merely found that there was no significant departure from the norm or customs of the sector. However, the mere fact that a shape is a ‘variant’ of the usual shapes of a category of goods is not sufficient to establish that this shape has distinctive character, nor does the fact that an industry is characterised by a wide variety of shapes of goods mean that any new shape will necessarily be perceived as one of those shapes.

In this regard the Guerlain case was deemed sufficiently different and special as to surprise customers as the case couldn’t be placed upright, was shaped like a “boat hull or baby carriage” and was marked by a little oval embossed shape. The relevant public with a level of attention ranging from medium to high will be surprised by Guerlain’s easily memorized shape and will perceive it as significantly deviating from the norms and customs of the sector. Accordingly, the mark applied for has distinctive character, which permits it to be registered.

Source: EU General Court judgement of July 14th, T-488/20, Guerlain v EUIPO