EU General Court rules Guerlain can TM lipstick design
French cosmetics company Guerlain has convinced the EU General Court to overturn a ruling that denied the registration of a three-dimensional (3D) trademark for a lipstick.
The ruling reversed an EU Intellectual Property Office (EUIPO) First Board of Appeal decision that the 3D trademark “lacked distinctive character” when compared to the norms of marks for lipstick containers.
The General Court said the mark is “easily memorable” and “departs significantly from the norm and customs of the lipstick sector” before annulling the earlier decision.
While the General Court agreed that the novel shape of the container does not determine distinctiveness in a market where unique 3D marks are common, it ruled that this did not preclude a new mark from being novel.
The shape of Guerlain’s 3D trademark was found to be uncommon for lipstick and differs from any other existing mark on the market, with its “boat hull” and its “small oval embossed shape” feature being significantly novel for the sector to warrant registration.
The court was also persuaded by Guerlain’s argument that novelty was added by the lipstick’s inability to be placed upright. This further “reinforces the uncommon visual aspect of the shape” according to the court.
The General Court judges wrote: “The relevant public with a level of attention ranging from medium to high will be surprised by this easily memorised shape and will perceive it as significantly deviating from the norm and habits of the lipstick sector capable of indicating the origin of the products concerned.”
As a result, the mark was found to have a distinctive character by the court and registration was permitted. The EUIPO was ordered to pay costs incurred by Guerlain.
Case history
Guerlain submitted the 3D trademark to be registered under class 3 of the Nice Agreement for “lipstick” in September 2018.
The EUIPO examiner rejected the application on 21 August, 2019, claiming that the mark lacked distinctive characteristics under Article 7 (3), leading Guerlain to appeal the decision.
However, the registration was denied again on 2 June, 2020, by the First Board of Appeal of the EUIPO, concluding that “usual lipsticks existing on the market were not considerably different”.
The board of appeal did note that the mark was “different from all other forms of lipstick existing on the market”, but claimed it did not diverge enough from the standards of the sector.
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