THE LIPSTICK THAT LEAVES THE MARK: THE GENERAL COURT OF THE EUROPEAN UNION RECOGNIZES THE REGISTRABILITY OF THE SHAPE OF THE GUERLAIN LIPSTICK AS EU 3D TRADEMARK

14/09/2021

With its decision of July 14, 2021, the General Court of the European Union annulled the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of June 2, 2020, finding that the shape of Guerlain’s Rouge G lipstick has distinctive character and, therefore, is eligible for registration as a 3D trademark.

 

The trademark, by creating a link between the products placed on the market and the company, makes it easier for the consumer to find the products he is looking for, allows the owner to build and strengthen the identity of his company and at the same time rewards efficient producers, to the extent that they are able to capitalize on their business merits within the distinctive sign, becoming a fundamental tool in competitive strategies.

Traditionally, the role of indicator of the provenance of a fashion design item is entrusted to the word trademark and the figurative trademark. In fact, fashion houses tend not to consider the shape of the product itself to be suitable for a distinctive function, since it is believed that consumers find it easier to attribute an indicator meaning to a term or a logo rather than to a shape. This does not mean that the fashion world is devoid of 3D trademarks: Hermès, currently, among registered and applied-for trademarks, has more than thirty shape trademarks, Ferragamo has forty-seven.

The number of companies in the fashion industry that can claim ownership of several 3D trademark registrations has been steadily increasing in recent years. Following the decision of the General Court of the European Union, among these there is also the Rouge G lipstick by Guerlain.

 

The General Court of the European Union recently annulled the decision rendered by the First Board of Appeal of the European Intellectual Property Office (EUIPO) regarding the application for registration as EU trademark of a three-dimensional sign consisting of the shape of an oblong, conical and cylindrical lipstick proposed by Guerlain.

On October 19, 2018, Guerlain had filed an application for EU trademark registration covering the shape of a lipstick in Class 3 for “lipstick” goods.

The EUIPO had refused the application, deeming the sign to be devoid of distinctive character. This decision was also confirmed by the First Board of Appeal on the grounds that the shape of Guerlain’s Rouge G lipstick did not differ from the other usual shapes on the market.

The General Court of the EU, on July 14, 2021, ruled on the case, annulling the previous decisions, considering that the shape under examination “is uncommon for a lipstick and differs from any other shape existing on the market” (par. 49).

This decision supports the opinion according to which the distinctiveness of a 3D trademark must be assessed on a case-by-case basis, looking at the norm and the customs of the sector concerned, which “all the shapes which the consumer is accustomed to seeing on the market” and verifying whether the product is capable of generating an uncommon visual effect in the public.

The General Court, denying the Commission’s conclusions, pointed out that the mere fact that a shape constitutes a “variant” of one of the usual shapes of a type of product is not sufficient to establish that said shape has distinctiveness. The fact that a sector is characterized by a wide variety of shapes of products does not imply that any new shape is necessarily perceived as one of them (par. 50).

With reference to the capacity of a shape to be perceived as an indicator of origin, the Court has underlined how the fact that certain goods have a quality design does not necessarily imply that a mark consisting of the three-dimensional shape of such goods is distinctive ab initio (par. 42). On the contrary, the aesthetic aspect of the product will have to be assessed to ascertain a departure from the norm and from the customs of the sector, provided that this aesthetic aspect is understood as recalling the objective and uncommon visual effect of the specific design of the said trademark. Consequently, according to the Court, the consideration of the aesthetic aspect of the mark should not result in an assessment of the beauty or lack thereof of the product in question, which would be subjective, but is aimed at ascertaining whether that aspect is capable of having an objective and uncommon visual effect on the relevant public (par. 44).

In the present case, the above analysis led the General Court of the European Union to conclude that the shape of Guerlain’s Rouge G lipstick is uncommon for a lipstick and distinguishes itself from any other shape existing on the market, as:

  •  “the shape recalls that of the hull of a boat or a baby carriage” thus distinguishing itself from the cylindrical or parallelepiped shape presented by most lipsticks on the market;
  •  “the presence of the small oval shape in relief is unusual” and therefore contributes to the uncommon appearance of the mark applied for;
  • finally, the fact that the lipstick represented by the 3D trademark cannot be placed in a vertical position reinforces the uncommon visual aspect of its shape.

These elements allow to identify the product as coming from a certain firm and therefore to distinguish it from the products of other companies. The same is, therefore, distinctive within the meaning of and for the purposes set out in Article 7(1)(b) of Regulation (EU) 2017/1001 and is therefore capable of constituting a valid trademark.

Giulia Spata