Case T‑488/20
(Publications by extracts)
Guerlain
v
European Union Intellectual Property Office
Judgment of the General Court (Fifth Chamber), 14 July 2021
(EU trade mark – Application for registration of a three-dimensional EU trade mark – Shape of an oblong, tapered and cylindrical lipstick – Absolute ground for refusal – Distinctive character – Article 7(1)(b) of Regulation (EU) 2017/1001)
1. EU trade mark – Definition and acquisition of the EU trade mark – Absolute grounds for refusal – Marks devoid of distinctive character – Three-dimensional trade marks consisting in the shape of the product itself – Distinctive character – Criteria for assessment – Norm or customs of the sector – Concept
(European Parliament and Council Regulation 2017/1001, Art. 7(1)(b))
(see paragraphs 15-18, 39-41, 48)
2. EU trade mark – Definition and acquisition of the EU trade mark – Absolute grounds for refusal – Marks devoid of distinctive character – Three-dimensional trade marks consisting in the shape of the product itself – Distinctive character – Criteria for assessment – Shape at issue being a ‘variant’ of the common shapes of the type of products concerned – Fact not sufficient to establish distinctiveness of the mark
(European Parliament and Council Regulation 2017/1001, Art. 7(1)(b))
(see paragraphs 19, 50)
3. EU trade mark – Definition and acquisition of the EU trade mark – Absolute grounds for refusal – Marks devoid of distinctive character – Recognition of the distinctiveness of the sign not subject to a finding of a certain level of creativity or linguistic or artistic imagination
(European Parliament and Council Regulation 2017/1001, Art. 7(1)(b))
(see paragraph 20)
4. EU trade mark – Definition and acquisition of the EU trade mark – Absolute grounds for refusal – Marks devoid of distinctive character – Three-dimensional trade marks consisting in the shape of the product itself – Distinctive character – Criteria for assessment – Objective and uncommon visual effect of the aesthetic aspect
(European Parliament and Council Regulation 2017/1001, Art. 7(1)(b))
(see paragraphs 42-44)
5. EU trade mark – Definition and acquisition of the EU trade mark – Absolute grounds for refusal – Marks devoid of distinctive character – Three-dimensional mark consisting in the shape of a lipstick
(European Parliament and Council Regulation 2017/1001, Art. 7(1)(b))
(see paragraphs 49, 52-57)
Résumé
EU trade mark: The three-dimensional mark in the shape of a Guerlain lipstick may be registered
The General Court annuls the decision of EUIPO which dismissed Guerlain’s initial application
Guerlain applied to the European Union Intellectual Property Office (EUIPO) for registration of a three-dimensional EU trade mark in respect of lipsticks. It is a three-dimensional sign consisting in the shape of a lipstick, represented as follows:
The EUIPO Examiner found that the mark applied for lacked distinctive character (1) and dismissed the application for registration. The Board of Appeal upheld that decision, finding that the mark did not depart sufficiently from the norms and customs of the sector.
The General Court annuls the decision of the Board of Appeal. It finds that the mark applied for has distinctive character because it departs significantly from the norm and customs of the lipstick sector.
Findings of the General Court
In the first place, the General Court recalls that the assessment of whether it has distinctive character is not based on the originality or the lack of use of the mark applied for in the field to which the goods and services concerned belong. A three-dimensional mark consisting in the shape of the product must necessarily depart significantly from the norm or customs of the sector concerned. Accordingly, the mere novelty of that shape is not sufficient in order to conclude that there is distinctiveness. However, the fact that a sector is characterised by a wide variety of product shapes does not mean that a new possible shape will necessarily be perceived as one of them.
In the second place, according to the General Court, 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 it possible for them to be distinguished from the goods of other undertakings. It notes that taking into account the aesthetic aspect of the mark applied for does not amount to an assessment of the attractiveness of the product in question but is done with the aim of determining whether that product is capable of generating an objective and uncommon visual effect in the perception of the relevant public.
In the third place and lastly, whilst taking into account the images taken into consideration by the Board of Appeal as constituting the norm and customs of the sector concerned, the General Court finds that the shape in question is uncommon for a lipstick and differs from any other shape existing on the market. It observes, first of all, that that that shape is reminiscent of that of a boat hull or a baby carriage. Such a shape differs significantly from the images taken into consideration by the Board of Appeal, most of which represented cylindrical and parallelepiped lipsticks. Next, the presence of the small oval embossed shape is unusual and contributes to the uncommon appearance of the mark applied for. Lastly, the fact that the lipstick represented by that mark cannot be placed upright reinforces the uncommon visual aspect of its shape.
Consequently, the General Court finds that 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 capable of indicating the origin of the goods concerned. Accordingly, the mark applied for has distinctive character, which permits it to be registered.