In its decision of 14 July 2021 in case T-488/20 Guerlain against EUIPOthe General Court of the European Union (GCEU) has overturned a decision rendered by the European Union Intellectual Property Office (EUIPO) rejecting Guerlain’s European trademark application for the shape of its lipstick “Rouge G “.
Guerlain has filed a class 3 CTM application for “lipsticks” for the 3D mark representing the shape of its “Rouge G” lipstick.
Both the EUIPO examiner and the Boards of Appeal rejected Guerlain’s claim for lack of distinctiveness, finding that this shape did not deviate significantly from industry standards and practices. Guerlain appealed to the General Court, arguing that the shape of its lipstick was visually significantly different from common lipstick shapes.
The Tribunal’s view
The General Court annulled the decision of the Boards of Appeal after considering that Guerlain’s trademark application had a distinctive character.
The General Court recalled that a three-dimensional mark consisting of the shape of a product must deviate significantly from the norm or practices of the sector concerned in order to be considered distinctive. The fact that a shape is a variant of the usual shapes associated with a type of product is not sufficient to establish that this shape (that is to say, lipstick) has a distinctive character. However, a sector characterized by a wide variety of product forms, such as the lipstick sector, does not necessarily imply that every possible new form will be perceived as one of them.
In this case, the Tribunal said:
The shape of the Guerlain product, reminiscent of a boat hull or a stroller, differs significantly from the standard shape of lipstick that exists on the market.
The presence of the small raised oval shape is unusual.
The fact that the lipstick represented cannot be placed upright reinforces the unusual visual aspect of its shape.
The Court concluded that the relevant public will be surprised by this unusual shape and will perceive it as a significant departure from the norm and practices of the lipstick sector and as an indication of commercial origin. Therefore, the Court decided that this 3D mark should be registered by EUIPO.
Impact on brand owners
In practice, the registration of three-dimensional marks raises many difficulties due to the strict validity requirements under EU law. There is no doubt that the registration of three-dimensional marks is much more difficult than the registration of word or figurative marks in the European Union.
However, this decision may encourage companies to seek protection for the distinctive design elements of their products, provided that the shape of their products differs significantly from industry standards and customs.
Moreover, three-dimensional brands offer extremely interesting strategic perspectives for companies. Indeed, the owner of such trademarks enjoys exclusive, and possibly perpetual, rights to a specific product design throughout the European Union.