In a decision likely to be welcomed by owners of 3D trade marks, the EU General Court has ruled that the shape of Guerlain’s Rouge G lipstick “is uncommon for a lipstick and differs from any other shape existing on the market”. The Court reversed the Board of Appeal’s finding, and found the shape could be registered as an EU trade mark.
Guerlain applied for an EU trade mark (pictured) in September 2018 for “lipsticks” in class 3. It was rejected by the examiner under Article 7(1)(b), and this finding was upheld by the EUIPO's Board of Appeal. The Board said the mark was not distinctive, as all lipsticks are cylindrical and consumers were used to containers with an oval shape.
However, in its decision on 14 July 2021 (Case T-488/20, judgment in French), the Court found that the aesthetic aspect of a mark consisting in the shape of the packaging of a product may be taken into account “to establish a difference in relation to the norm and customs of a sector, provided that that aesthetic aspect is understood as referring to the objective and uncommon visual effect produced by the specific design of that mark”.
Such an “aesthetic” evaluation is not a subject assessment of attractiveness, but a question of “whether that product is capable of generating an objective and uncommon visual effect in the eyes of the relevant public”.
The Court also said that the norm and customs of the sector cannot be reduced just to the statistically most common form, but must include all the shapes which the consumer is accustomed to seeing on the market: “While it is true … that the mere fact that a shape is a ‘variant’ of one of the common shapes of a type of goods is not sufficient to establish that that shape has distinctiveness, the fact that a sector is characterised by a wide variety of product shapes does not mean that any new shape will necessarily be perceived as one of them.”
It concluded that the relevant public with a medium to high level of attention will be surprised by the “easily memorised” shape of Guerlain’s lipstick and will perceive it as significantly deviating from the norms of the sector.
Owners of 3D trade marks have often faced objections to registration from IP Offices and courts, so this decision is likely to be welcomed. The Court’s emphasis on the relationship between aesthetic value and distinctiveness may be of particular value to brand owners in sectors such as fashion, cosmetics and luxury goods.
To find out more about the issues raised in this case including trade mark disputes and filing contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - email@example.com
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