ARTICLE
Guerlain makes a good case T
his case addresses the burning question which puzzles many brand owners: can distinctive 3D packaging qualify for trade mark protection? The answer is yes. On 14 July 2021, the European Union General Court held that Guerlain’s lipstick case possesses distinctive character and qualifies for trade mark protection. Guerlain’s lipstick case was held to differ significantly from the norms and customs of the lipstick sector. Background In 2018, Guerlain applied for the registration of its threedimensional sign for “lipsticks” under Class three.
Guerlain’s 3D mark
Norms of lipstick sector
Initially, the EUIPO Examiner rejected Guerlain’s application and found that the mark lacked distinctive character. The Board of Appeal upheld that decision finding that Guerlain’s lipstick case did not “depart significantly from the norm and customs of the lipstick sector”. However, the General Court of the EU found in favour of Guerlain. The 3D mark was found to have distinctive character and capable of trade mark protection. Three main points to take away Brand owners will be interested in the following three key points arising in this decision: 1. Assessment of distinctive character The assessment of distinctive character is not based on the originality or the lack of use of the mark applied for. For 3D marks consisting in the shape of the product, the mark in question must depart significantly from the norms or customs of the sector concerned. The novelty of a shape is not sufficient to be distinctive even if the shape has a high-quality design. If a sector is comprised of a wide variety of product shapes, it does not follow that a new shape will be perceived as one of them.
2. Does the mark generate an objective and unusual visual effect? As a starting point, the Court recognised the fact that goods with a high-quality design, which are highly aesthetic, are not necessarily capable of distinguishing one undertakings goods from those of another. The aesthetics of the mark are considered with the aim of determining whether the product is capable of producing an objective and unusual visual effect in the eyes of the relevant public. 3. What are the norms and customs in the market concerned? After a detailed review of images of those products concerning the “norms and customs of the sector”, the General Court accepted that the shape in question was uncommon for a lipstick. Importance was placed on the fact that Guerlain’s shape was “reminiscent of that of a boat hull or a baby carriage”. Another distinctive feature of the shape was the small oval embossed shape and that the case could not be placed upright. All in all, the General Court found that the relevant public will be “surprised” when looking at Guerlain’s “easily memorable” shape, and will conclude that it departs significantly from the norms and customs of the lipstick sector. In view of this, the mark was held to have distinctive character, which is a requirement for trade mark registration. Comment This case will be welcomed by brand owners. It addresses the difficult assessment of inherent distinctiveness and gives hope to those considering applying for unconventional marks. If you are considering applying for a trade mark, please do not hesitate to contact our specialist IP Team based in London. Our team can offer strategic advice around the securing, protecting and exploitation of your IP. ■
Lucy Marlow
Senior Associate Intellectual Property lucy.marlow@jmw.co.uk 0203 675 7600
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