BACKGROUND OF THE CASE

On 17 September 2018 Guerlain applied for registration as a European trade mark of a three-dimensional sign for Class 3, ‘lipsticks’. On 21 August 2019, the examiner refused registration on the grounds of lack of distinctiveness of the mark. This decision was appealed by Guerlain, however, on 2 June 2020 the First Board of Appeal of the EUIPO dismissed the appeal and upheld the examiner’s decision finding the lack of distinctiveness of the mark applied for. The Office considered that the differences between the usual lipsticks on the market and the applicant’s lipstick were not significant. Guerlain appealed against that decision to the General Court.

DECISION OF THE GENERAL COURT

As the General Court rightly states, according to the case-law, when registration is sought for a three-dimensional mark consisting of the shape of the product for which registration is sought, it must be examined whether it enables the average consumer to distinguish the product in question from the rest of products of other undertakings. In that regard, the mere fact that the shape of the product is a variant of one of the usual shapes of such goods is not sufficient to show that it is not devoid of distinctive character.

In this regard, Guerlain argued that the characteristics of the applicant mark are sufficiently different from the shapes and habits of the sector in which they are included, and further argued that the novelty and originality of the shape of the product should be taken into account when determining this fact. EUIPO argued that any divergence from the habits of the sector is not sufficient in itself to ensure the distinctiveness of the mark.

Following Guerlain’s argument, the General Court ruled that, according to the case law, the assessment of the distinctive character of the mark is not based on the originality of the mark. Moreover, the novelty of the shape of a three-dimensional mark is not sufficient to conclude that it has distinctive character, the decisive criterion being its ability to fulfil the function of indicating the commercial origin of the goods.

On the other hand, the Court emphasises that “the fact that the goods have a quality design does not necessarily mean that a mark consisting of the three-dimensional shape of those goods enables ab initio those goods to be distinguished from those of other undertakings”. This does not mean that the aesthetic aspect of a product, such as the shape of its packaging, cannot be taken into account in determining that there is a difference with respect to the shapes and habits of the sector. Therefore, when assessing the aesthetic aspect of a trade mark, it is not necessary to make a subjective examination of its beauty, but to check whether it is capable of generating a visual and objective effect for the relevant public.

Notwithstanding the above, the General Court considers that in this case, the shape of the lipstick at issue is unusual for its type of goods and differs from any other shape on the market. Even if the shape of the product is a variant of what is usual in a sector, this is not sufficient to find that it is devoid of distinctive character and the fact that there is a great diversity of shapes does not mean that a new shape has to be perceived as one of them.

The General Court therefore decided to uphold Guerlain’s appeal and annul the decision of the Board of Appeal of EUIPO, as the relevant public will perceive the applicant mark in a way that departs significantly from the shapes and customs of the sector, and therefore has distinctive character.

Judgment of the General Court, Fifth Chamber, 14 July 2021, Case T-488/20