French cosmetics manufacturer Guerlain is undoubtedly one of the most important players in the industry. No wonder it is trying to protect its products from being copied by competitors who want to take advantage of its reputation. Is it possible to register the shape of lipstick as a trade mark for that purpose?

Judgment of the General Court (Fifth Chamber) of 14 July 2021, case no. T-488/20

Trade marks can take a wide variety of forms. They can be a word or a graphic, but also a shape, including the shape of a product or its packaging. In 2018, Guerlain applied for registration of a three-dimensional EU trade mark in the form of a characteristic oblong, conical and cylindrical lipstick shape. The mark was presented in the application as follows:

EUIPO refused to register the mark, finding that it was not distinctive. The Board of Appeal upheld that decision on the basis that Guerlain’s lipstick shape did not differ significantly from other models on the market.

The General Court, however, in considering the appeal against the EUIPO decision, adopted a different assessment. While agreeing that the mere novelty of a shape does not yet mean that it is distinctive, the Court emphasised that the fact that a given industry is characterised by a considerable variety of product shapes does not mean that a new shape appearing on the market will always be perceived by consumers as merely one of many purely decorative shapes.

The assessment of the aesthetic aspect of the trade mark applied does not amount to the assessment of the attractiveness of the goods in question. Its aim is to determine whether the product is capable of evoking an objective and unusual visual effect in the perception of the relevant public.

The Court analysed the shape of the Guerlain lipstick and other lipsticks available on the market and came to the conclusion that the shape applied for is unusual for a lipstick and differs significantly from the other shapes. The unusual impression created by the shape of the Guerlain lipstick is reinforced by the fact that a product with that shape cannot be placed upright. Having regard to that, the General Court found that the mark had distinctive character. There was therefore no obstacle to its registration.

The determination of whether a mark has distinctive character is always made in relation to the relevant public, which may differ significantly for different industries. The Court’s judgment in the Guerlain lipstick case may be regarded as a green light for cosmetics manufacturers who would like to protect the distinctive design of their products or their packaging as a three-dimensional trademark. However, it should be borne in mind that every case is different. Individual features of each mark should be carefully analysed and its registrability meticulously examined before applying for registration.