Non-conventional trade marks in the EU: some good news for the beauty sector

After 3 years of battle with the EUIPO, Guerlain succeeded in registering its Rouge G lipstick case as a trade mark.

For quite a while, EUIPO has been sceptical about 3D signs consisting of a shape of product’s ability to act as a trade mark. When Guerlain filed a trade mark application for a 3D shape of its lipstick case in class 3 for “lipsticks” in 2018, the EUIPO refused it on the lack of distinctiveness grounds.

In accordance with Article 7 of EUTMR, one of the absolute grounds for refusal of the trade mark application is when the trade mark ‘is devoid of any distinctive character’.

For a non-conventional shape of a product trade mark to be considered distinctive for trade mark purposes, it has to depart significantly from the norms or customs of the sector. The EUIPO Board held that the Rouge G lipstick case was a mere variation on the shapes of lipstick cases normally available on the market, and therefore it doesn’t meet the required threshold to be considered distinctive.

Guerlain appealed this decision to the General Court.

The Court provided some useful guidance on the concept of distinctiveness in respect of non-conventional marks. Neither novelty/originality nor the attractiveness of the shape are directly relevant in assessing distinctiveness of the trade mark in question. What has to be established is that a trade mark consisting of a shape of a product diverges significantly from the norms or customs of the relevant sector.

Having reviewed the Guerlain’s lipstick case shape, the Court held it is indeed unusual for a lipstick as it reminds a boat hull or a baby carriage and is surprising and easily memorisable, and as such it diverges from other lipstick shapes on the market. The Court therefore held that the EUIPO was incorrect in concluding that the 3D sign in question is devoid of distinctive character.

This is good news for the beauty (and fashion) sector which has lately been struggling with obtaining trade mark protection for various aspects of the iconic beauty and fashion items.

Briffa, being expert in all aspects intellectual property law and practice, will be happy to help you put a trade mark protection strategy in place. If you would like to discuss protection of your brand, please drop us an email or give us a call and we will be happy to arrange a free consultation with one of our specialist IP lawyers.

Written by Anastasia Troshkova, Solicitor