The cosmetic company Guerlain applied in 2018 to the European Intellectual Property Office (EUIPO) to register a three-dimensional EU trademark for its lipsticks. The application consisted of a three-dimensional sign consisting of the shape of a lipsticks.
The EUIPO Examiner in charge of the application decided that the sign lacked distinctive character in accordance with article 7(1)(b) of the EU Trade Mark Regulation and the application was dismissed. Guerlain appealed this decision. The Board of Appeal also considered that the mark did not depart sufficiently from the norms and customs of the sector. The Board ruled that the sign was a mere variation from the shapes of lipstick cases that are available on the market.
Guerlain then referred the matter to the General Court of the European Union. The General Court issued its judgment on 14 July 2021 (case T-488/20).
The Court started by recalling that a three-dimensional mark consisting of the shape of the product must necessarily depart significantly from the norm or customs of the sector concerned. The novelty of the shape is not sufficient to conclude that the sign has a distinctive character. Furthermore, the fact that a sector is characterised by a wide variety of product shapes does not mean that a new possible shape will necessarily be perceived as one of them.
The attractiveness of the shape might serve to prove that such a shape indeed departs significantly from the norms or customs of the sector. In this regard, taking into account the aesthetic aspect of the mark applied does not amount to an assessment of the attractiveness of the product in question, which is always subjective, but has to be done with the aim of determining whether that product is capable of generating an objective and uncommon visual effect in the perception of the relevant public.
After the examination of the images of shapes of lipsticks constituting the norm and customs in the sector, the General Court considered that Guerlain’s sign is uncommon for a lipstick and differs from the norm or customs in the sector of lipsticks. The shape reminds one of a boat hull or a baby carriage and differs from the shapes in the market. Indeed, most of the shapes of lipsticks are cylindrical and parallelepiped which is not the case for the sign in question. The small oval embossed shape contributes to the uncommon appearance of the mark. Contrary to most lipsticks, this one cannot be placed upright.
The General Court concluded that the relevant public with a level of attention ranging from medium to high will be surprised by Guerlain’s shape and will perceive it as significantly departing from the norms and customs of the sector. The General Court therefore annulled the Board of Appeal’s decision.
This judgment is very interesting for applicants wishing to register shapes as a trademark. Most applications for shapes have been deemed to lack a distinctive character. Perhaps this judgement is the first of a new era for three-dimensional shapes.
Please contact Karel Janssens for further information about this topic and/or for general legal advice relating to intellectual property.