Guerlain’s red lips smile and a new hope for distinctive 3D packaging

General Court of the European Union, Case T-488/20 - Guerlain v EUIPO 

Back in 2018, Guerlain filed an application to register a three-dimensional EU trade mark, consisting of the shape of a lipstick packaging, in relation to lipsticks in class 3. The Operations Department of the EUIPO, confirmed by the Board of Appeal, refused the registration of this application based on its lack of distinctiveness considering that the three-dimensional packaging does not depart from the norm and customs of the lipstick sector.

On 14 July 2021, the General Court of the EU considered that Guerlain’s trade mark was distinctive and annulled the Board of Appeal’s decision.

In coming to this conclusion, the General Court emphasised that the assessment of distinctiveness by reference to the aestheticism of a trade mark application must not amount to a beauty assessment of the product, but should ascertain whether that product is capable of producing an objective and unusual visual effect on the relevant public. Also, the fact that a sector is characterised by an important variety of shapes of goods (such as in the case of lipsticks) does not necessarily mean that any new shape will be perceived as one of them.

The General Court reviewed the shape of Guerlain’s lipstick and ruled in favour of the French luxury cosmetics house, considering that the public will be surprised by this easily memorable shape.

Key point: this decision confirms that the distinctiveness of a three-dimensional shape trade mark must be assessed by reference to the specifics of the relevant product market and common practice in this sector.