March 25, 2023

Volume XIII, Number 84


March 24, 2023

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March 23, 2023

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Luxe Cosmetic Brand Successfully Obtains Trademark Protection for 3d Lipstick Shape

In its 14 July 2021, decision in case T-488/20 Guerlain v EUIPO, the General Court of the European Union (GCEU) annulled a decision made by the European Union Intellectual Property Office (EUIPO) that dismissed Guerlain’s EU trademark application for the shape of its “Rouge G” lipstick.

Guerlain filed an EU trademark application in Class 3 for “lipsticks” for the 3D trademark representing the shape of its “Rouge G” lipstick.

Both the EUIPO examiner and Boards of Appeal rejected Guerlain’s application for lack of distinctive character, finding that this shape did not deviate significantly from the norms and customs of the sector. Guerlain lodged an appeal with the General Court, arguing that the shape of its lipstick was visually substantially different from common lipstick shapes.

The General Court’s View

The General Court overturned the Boards of Appeal’s decision after considering that Guerlain’s trademark application has a distinctive character.

The General Court recalled that a three-dimensional mark consisting in the shape of a product must depart significantly from the norm or customs of the concerned sector to be considered distinctive. The fact that a shape is a variant of the usual shapes associated with a type of product is not sufficient to establish that this shape (i.e., the lipstick) has a distinctive character. However, a sector characterized by a wide variety of product shapes, like the lipstick sector, does not necessarily infer that any new possible shape will be perceived as one of them.

In the present case, the General Court stated:

  • The shape of Guerlain’s product, reminiscent of a boat hull or a baby carriage, significantly differs from the standard lipstick shape that exists on the market.

  • The presence of the embossed small oval shape is unusual.

  • The fact that the lipstick represented cannot be placed upright reinforces the uncommon visual aspect of its shape.

The General Court concluded that the relevant public will be surprised by this unusual shape and perceive it as departing significantly from the norm and customs of the lipstick sector and as an indication of commercial origin. Therefore, the General Court ruled that this 3D trademark should be registered by the EUIPO.

Impact on Brand Owners

In practice, the registration of three-dimensional trademarks raises many difficulties because of the stringent validity requirements provided by EU law. There is no doubt that registering three-dimensional trademarks is much more difficult than registering word or figurative trademarks in the European Union.

However, this decision may incentivize companies to seek protection for the distinctive design elements of their products, provided that the shape of their products significantly differs from the norms and customs of the sector.

In addition, three-dimensional trademarks offer extremely interesting strategic perspectives for companies. Indeed, the owner of such trademarks benefits from exclusive, and possibly perpetual, rights on a specific product design throughout the European Union.

© 2023 McDermott Will & EmeryNational Law Review, Volume XII, Number 62

About this Author

Laura Morelli, McDermott Will, Paris, Intellectual property Lawyer, Perfume Trademarks Attorney

Laura Morelli leads the Paris Intellectual Property Practice. She advises French and foreign companies in a wide variety of sectors, including the chemical, energy, fashion, food processing, media, perfume, pharmaceutical and technology industries.

Laura assists her clients, as advisor and as litigation counsel, in all stages of protection, exploitation and defense of their intellectual property rights, including trademarks, patents, know-how, authors' rights, designs and models. She also has significant experience in matters of unfair...

Claire Boosz Associate Paris McDermott Will & Emery

Claire Boosz focuses her practice on intellectual property (IP) matters. She both provides legal counsel and represents clients in contentious matters before the courts.

Prior to joining McDermott, Claire completed several internships in French law firms, a well-known British-American law firm in Luxembourg and most recently a British law firm in Paris. She worked on various IP law topics including trademark, copyright and design for sectors such as media, cosmetics, luxury goods and food.

+33 1 816-90875
Charles de Raignac Intellectual Property Lawyer McDermott Will & Emery Law Firm

Charles de Raignac advises French and foreign companies on all aspects of intellectual property law (patents, know-how, trademarks, authors’ right, designs and models).

Charles has experience in enforcing, litigating and licensing intellectual property rights in various sectors, including the life-sciences, media and fashion industries. Charles also assists clients in managing their trademark/design portfolio and developing coherent and inventive filing strategies.

+33 1 81 69 14 65