It is notoriously difficult to register shapes as trade marks, because consumers are not accustomed to identifying the origin of specific products based on their appearance alone without any other graphic or verbal elements. However, Guerlain recently managed to buck the trend and secure trade mark protection for the 3D shape of a lipstick on the basis that the shape departs significantly from the norms and customs of the sector.
The Application and Refusals:
In 2018, luxury cosmetics brand Guerlain applied to register the shape of one of their lipsticks as an EUTM:
Trade Mark Application:
The Examination Division of the EUIPO rejected the application on the basis that the mark was non-distinctive, and the decision was confirmed by the Board of Appeal.
The key finding was that the shape in question did not sufficiently depart from the common shapes of lipsticks on the market (i.e. the norms and customs of the sector), so that consumers would not perceive Guerlain’s lipstick itself as a badge of origin.
Appeal to the General Court:
Guerlain went on to appeal this decision before the General Court, primarily arguing that its product substantially differed visually from common lipstick shapes for the following reasons:
It does not include any flat surfaces, so cannot stand vertically;
It consists of a unique form akin to a boat, bassinet or an upside down gold bar, with round edges and a convex upper part;
It features a rectangular hinge to open the product and reveal a double mirror; and
There is an embossed oval shape on the case.
Guerlain claimed that each of these features individually diverges from the norm for lipsticks, and that this departure from the norm is even more apparent when taking all these features in combination and looking at the product as a whole.
The applicant also stressed the outstanding aesthetic aspects of the product as well as the novelty and originality of the shape, which Guerlain argued is further evidence of the distinctive character of the product. Indeed, both the media and consumers reportedly branded the product as consisting of a ‘revolutionary’ shape.
The General Court’s Decision:
The General Court first dismissed Guerlain’s reference to press coverage and consumer comments on the shape, as the analysis of the sign’s inherent distinctive character must be limited to its representation in the application. It also disregarded the alleged innovative and aesthetically pleasing character of the shape put forward by the applicant, reiterating that the only relevant criteria is whether the shape departs from the norms and customs of the sector, in line with the EU case law.
However, aesthetic quality can be taken into account as long as it is not subjectively assessed, and only to show that the design of the lipstick objectively produces an unusual visual impression in the eyes of consumers.
Importantly, the analysis of the norms and customs in the relevant sector cannot exclusively be limited to the most widespread shape (statistically), but should include every shape the public is accustomed to encountering on the marketplace. If the sector is characterised by a variety of shapes, a new additional shape cannot automatically be refused registration on the basis that it is just another variant.
The General Court acknowledged that lipsticks come in various shapes and sizes and compared Guerlain’s lipstick against the most common cylindrical lipstick shape and also against lipsticks with a parallelepiped shape which were also considered to be a customary shape for lipsticks on the marketplace. The General Court held that the relevant consumer would be surprised by the memorable shape of Guerlain’s product, and would perceive it as departing significantly from the norms and customs of the lipstick sector.
Accordingly, the mark was held to be inherently capable of acting as a badge of origin and on this basis, the Application was allowed.
The decision illustrates the ever-challenging assessment of inherent distinctiveness in relation to shape marks, but gives brand owners hope that unusual shapes can be granted protection as an EUTM.
When anticipating and addressing objections from the Registry, it is crucial to carry out an objective analysis and comparison of the shape which is the subject of the application against those commonly found on the marketplace (and to which consumers may be accustomed) for the same product. It is also worth noting that a number of small differences from the norm might, when taken together, be enough to show a sufficient departure from common shapes in the relevant sector to secure a registration.