In what will be welcomed by innovative design brands, on 14 July 2021, the General Court of the EU handed down a decision annulling the EUIPO and Board of Appeal’s decisions that a mark filed by Guerlain lacked distinctive character. This decision emphasises that a distinctiveness assessment of a three-dimensional mark must be undertaken by reference to the specifics of common practice in the market for the relevant products.

The Application

Guerlain, the French luxury perfume, cosmetics and skincare house, originally applied to the EUIPO for registration of the below three-dimensional trademark in respect of lipsticks:

The EUIPO, and consequently the Board of Appeal, dismissed Guerlain’s application on the basis that the mark lacked ‘distinctive character’, meaning it was not sufficiently distinctive to enable the product to be identified as originating from Guerlain.

The General Court of the EU’s Decision

On appeal, the General Court of the EU annulled the EUIPO and Board of Appeal’s decisions, finding that merely because a certain a sector is characterised by a wide variety of shapes (such as in the case of lipsticks) does not necessarily mean that a particular new shape would merely be perceived as a decorative shape.

The General Court’s decision emphasised that assessment of distinctiveness by reference to the aestheticism of any aspect of the mark is concerned with “determining whether that product is capable of generating an objective and uncommon visual effect in the perception of the relevant public”.

Looking closely at the shape of Guerlain mark in comparison to other lipstick shapes on the market, the General Court noted that the mark was distinctive on account of:

• its shape – noting that the Guerlain mark is comparable to a ‘boat hull’ or ‘baby carriage’, as opposed to the cylindrical shapes usually encountered in the product market;

• its surface markings – as the small oval embossed shape on its surface is unusual; and

• its functionality (or lack thereof) – given that the Guerlain shape would not be able to be placed upright.

On this basis, the General Court concluded the shape of the Guerlain mark would be ‘memorable’ by consumers in the lipstick sector, and as such should be registered.

Takeaways

This judgment demonstrates that the issue of the distinctiveness of three-dimensional shape marks should be assessed closely on a case-by-case basis, with precise reference to the relevant product market and sector. It also confirms that assessment of aesthetic elements of any mark applied for should be carried out with a view to establishing whether the product is capable of generating an objective, uncommon visual effect on the wider public.

Guerlain’s ultimate success in registering this mark also demonstrates that cosmetic and fragrance producers can hold out hope for the future and their ability to register distinctive 3D packaging.