General Court rules that shape of Guerlain's Rouge G lipstick case can be registered as a trade mark

Can the shape of a lipstick case function as an indicator of commercial origin? The answer is yes when such case is the iconic and immediately recognizable (at least to lipstick lovers!) one of Rouge G de Guerlain:

Today, also the General Court did agree in its judgment in T-488/20 Guerlain [currently only available in French].

The judgment (correctly) reverses the earlier, contrary decision of the EUIPO First Board of Appeal (2292/2019-1).

Background

In 2018, Guerlain applied to register the 3D sign represented above (left-hand side) for “lipsticks” in Class 3.

The EUIPO examiner rejected the application considering that the sign would lack distinctive character, in accordance with Article 7(1)(b) EUTMR. The subsidiary claim of the applicant under Article 7(3) EUTMR (acquired distinctiveness) could be examined once the decision became final.

Guerlain unsuccessfully appealed. 

The EUIPO Board considered that the shape applied for would not depart significantly from the norms or customs of the sector, as it has become (routinely) required for trade mark applications relating to less conventional signs (eg, patterns, shapes, position marks). According to the Board, the applicant’s sign was a mere variation on the shapes of lipstick cases normally available on the market.

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A further appeal to the General Court followed.

The decision

The Court noted at the outset that the concept of distinctiveness is different from that of novelty or originality: the fact that the specialist press regarded the applicant’s sign as "revolutionary" is not relevant for assessing distinctiveness. What (case) law requires is that a 3D sign consisting of the shape of a product diverges significantly from the norms or customs of the concerned sector.

Insofar as the attractiveness of the shape is concerned, this may be taken into account among other things, in that it can serve to prove that such shape does indeed diverge significantly from the norms or customs of the concerned sector because it produces an objective and unusual visual effect in the eyes of the relevant public.

The General Court then reviewed the part of the (contradictory, according to the Court) Board's decision relating to the “norms and customs of the sector”: sure, said the Court, cylindrical shapes might be the most common ones, but they are not the only ones. It follows that the norms and customs of the sector cannot be reduced to what is statistically most widespread, but must instead include all the shapes that the consumer is accustomed to see on the market. All this said, the fact that a certain sector is characterized by the presence of different shapes does not mean that a new possible shape should be regarded as a mere variation thereof.

Taking into account the images considered by the Board (above), the Court concluded that the applicant’s shape is unusual for a lipstick in that it reminds one of a boat hull or a baby carriage. As such, it differs from any other shape on the market. 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 lipstick sector. As such, the Board was incorrect in denying that such shape would possess distinctive character.

Comment

If we consider the fashion sector in the past 2-3 years alone, things have been rather gloomy for trade mark applications relating to less conventional signs. For instance: the Court of Justice of the European Union has held Birkenstock's surface pattern mark devoid of distinctiveness (C-26/17 P); LVMH has not yet been able to secure registration of its Damier Azur pattern (though things may look up now; T-105/19); the shape of Moon Boots may be protected by copyright (in Italy) but it has so far been unsuccessful on the trade mark registration front (1093/2019-1); and the Buffalo position mark has not been considered registrable yet (2167/2019-1).

Today's decision represents a sensible outcome and brings about some welcome and refreshing news to trade mark applicants seeking to register shape or less conventional marks. Will distinctiveness findings be more en vogue also for these trade mark applications from now on?