According to a press release of 14 July 2021, the General Court of the European Union (GC) rendered a judgement in Case T-488/20 Guerlain v EUIPO allowing the shape of a lipstick for registration.
Guerlain filed an application for registration of the following three-dimensional EU trademark:
The EUIPO Examiner rejected the application for lack of distinctive character which was confirmed by the Board of Appeal on the ground that the mark did not depart sufficiently from the norms and customs of the sector. The GC did not share this view.
According to the GC: The assessment of whether a mark has distinctive character is not based on the originality or the lack of use of the mark applied for in the relevant field of goods. A three-dimensional mark consisting in the shape of the product must necessarily depart significantly from the norm or customs of the sector concerned to be registrable whereby the mere novelty of that shape is not sufficient to conclude that there is distinctiveness. The fact that a sector is characterized by a wide variety of product shapes does not mean that a new possible shape will necessarily be perceived as one of them. The fact that goods have a high-quality design does not necessarily mean that a mark consisting in the three-dimensional shape of those goods makes them distinguishable from the goods of other undertakings. Considering the aesthetic aspect of the mark applied for in the present case aims at determining whether that product is capable of generating an objective and uncommon visual effect in the perception of the relevant public.
Considering the images submitted in the proceedings representing the norm and customs of the sector concerned, the GC found that the shape in question is uncommon for a lipstick and differs from any other shape existing on the market. In particular, the fact that the lipstick represented by the mark cannot be placed upright reinforces the uncommon visual aspect of its shape. In consequence, according to the GC, the relevant public will be surprised by this easily memorable shape and will perceive it as departing significantly from the norm and customs of the lipstick sector and hence as capable of indicating the origin of the goods concerned.
Whether this judgement indicates that the attitude towards the registrability of three-dimensional trademarks will become more liberal, remains to be seen once the full judgment will be published. So far, the practice of the EUIPO, mostly confirmed by the European Courts, had been rather restrictive.