Three-dimensional brand: the distinctive character of the Guerlain lipstick tube

 The Guerlain company filed a three-dimensional trade mark application with the European Office on September 17, 2018, in order to register as a trade mark the shape of the lipstick tube entitled "Rouge G de Guerlain", the representation of which is reproduced. below. This registration request was rejected by EUIPO on August 21 on the basis of Article 7, § 1, sub b) of Regulation (EU) 2017/1001 of June 14, 2017, on the grounds that the form of lipstick tube was not distinctive. Guerlain then appealed against this rejection decision on October 14, 2019 before the First Board of Appeal of EUIPO. On 2 June 2020, the latter confirmed the EUIPO's decision, citing the fact that the cylindrical shape of the lipstick tube in question was not clearly distinguishable from other products in the relevant market. It is from this decision that the General Court of the European Union was seized.


mark_trimension ...


Protecting the shape of a product as a three-dimensional mark

Just as it is possible to register a sign as a figurative mark or even a series of letters as a word mark, the shape of a product can be registered as a three-dimensional mark. This registration makes it possible to protect the appearance of a product when it has a certain peculiarity.


To be valid, the three-dimensional mark must meet the same conditions as any other type of mark. Thus, only a lawful mark (reg. [EU] 017/1001, art. 7, § 1, ss f), available (art. 8, § 1), capable of graphic representation (art. 4, ss b) and distinctive (art. 7, § 1, ss b), may be subject to registration. Furthermore, and taking into account the specificity of the three-dimensional mark, Article 7, § 1, sub e) of Regulation (EU) 2017/1001 specifies that a sign “consisting exclusively of […] cannot be registered as a three-dimensional mark. ] by the shape, or another characteristic imposed by the very nature of the product; […] Necessary for obtaining a technical result; […] Or some other characteristic of the product, which gives substantial value to the product ”. Under this article, a product whose form is guided only by its function cannot be registered as a trademark.


Three-dimensional trademarks, which are reminiscent of the protection conferred by design law, are the subject of abundant case law with regard to compliance with these various conditions, and more particularly with regard to the condition of distinctiveness. In particular, the three-dimensional mark protecting the shape of the Rubik's Cube was canceled (Trib. UE 24 Oct. 2019, Rubik's Brand Ltd. v. EUIPO, case T-601/17, Dalloz actualité, 14 Nov. 2019, obs. A. Beyens) or the one protecting the shape of the famous Lego bricks (CJUE 14 Sept. 2010, Lego Juris v. OHIM, aff. C-48/09 P, Dalloz actualité, 4 Oct. 2010, obs. J. Daleau).


Although the respect of these conditions by the three-dimensional mark of Guerlain has been called into question twice by the EUIPO, the General Court of the European Union has ruled that it is valid.


The Guerlain lipstick tube, a distinctive three-dimensional brand

A mark is distinctive when it allows the consumer to identify the origin of the product or service to which it is affixed. In order to determine which consumer to take into account, case law relies on the notion of "relevant public". This distinctiveness is appreciated in concreto, on the day the trademark is filed and in all the territories covered by the filing.


In order to demonstrate the distinctive character of its mark, the Guerlain company invoked certain specific characteristics of the lipstick tube, which, according to it, enabled it to recognize its distinctive character. His arguments were as follows: the tube does not contain any flat surface, it evokes the shape of a boat hull or a bassinet, it includes a rectangular notch on the side of the tube that can resemble a hinge as well as an oval-shaped relief located in the middle of the tube, allowing it to be locked and unlocked. The company also claimed that, given these different characteristics, the lipstick tube cannot be held upright, given the absence of any right angles.


Conversely, EUIPO maintained that some of the characteristics invoked by the company were only guided by the technical function of the product (like the oval shape in the middle of the tube) or were a simple adaptation of elements present. within competing products.


In response to these various arguments, the Court first of all recalls that the assessment of the distinctive character of a mark does not depend on the novelty or originality of the product, but rather on its ability to beThe Guerlain company filed a three-dimensional trade mark application with the European Office on September 17, 2018, in order to register as a trade mark the shape of the lipstick tube entitled "Rouge G de Guerlain", the representation of which is reproduced. below. This registration request was rejected by EUIPO on August 21 on the basis of Article 7, § 1, sub b) of Regulation (EU) 2017/1001 of June 14, 2017, on the grounds that the form of lipstick tube was not distinctive. Guerlain then appealed against this rejection decision on October 14, 2019 before the First Board of Appeal of EUIPO. On 2 June 2020, the latter confirmed the EUIPO's decision, citing the fact that the cylindrical shape of the lipstick tube in question was not clearly distinguishable from other products in the relevant market. It is from this decision that the General Court of the European Union was seized.


mark_trimension ...


Protecting the shape of a product as a three-dimensional mark

Just as it is possible to register a sign as a figurative mark or even a series of letters as a word mark, the shape of a product can be registered as a three-dimensional mark. This registration makes it possible to protect the appearance of a product when it has a certain peculiarity.


To be valid, the three-dimensional mark must meet the same conditions as any other type of mark. Thus, only a lawful mark (reg. [EU] 017/1001, art. 7, § 1, ss f), available (art. 8, § 1), capable of graphic representation (art. 4, ss b) and distinctive (art. 7, § 1, ss b), may be subject to registration. Furthermore, and taking into account the specificity of the three-dimensional mark, Article 7, § 1, sub e) of Regulation (EU) 2017/1001 specifies that a sign “consisting exclusively of […] cannot be registered as a three-dimensional mark. ] by the shape, or another characteristic imposed by the very nature of the product; […] Necessary for obtaining a technical result; […] Or some other characteristic of the product, which gives substantial value to the product ”. Under this article, a product whose form is guided only by its function cannot be registered as a trademark.


Three-dimensional trademarks, which are reminiscent of the protection conferred by design law, are the subject of abundant case law with regard to compliance with these various conditions, and more particularly with regard to the condition of distinctiveness. In particular, the three-dimensional mark protecting the shape of the Rubik's Cube was canceled (Trib. UE 24 Oct. 2019, Rubik's Brand Ltd. v. EUIPO, case T-601/17, Dalloz actualité, 14 Nov. 2019, obs. A. Beyens) or the one protecting the shape of the famous Lego bricks (CJUE 14 Sept. 2010, Lego Juris v. OHIM, aff. C-48/09 P, Dalloz actualité, 4 Oct. 2010, obs. J. Daleau).


Although the respect of these conditions by the three-dimensional mark of Guerlain has been called into question twice by the EUIPO, the General Court of the European Union has ruled that it is valid.


The Guerlain lipstick tube, a distinctive three-dimensional brand

A mark is distinctive when it allows the consumer to identify the origin of the product or service to which it is affixed. In order to determine which consumer to take into account, case law relies on the notion of "relevant public". This distinctiveness is appreciated in concreto, on the day the trademark is filed and in all the territories covered by the filing.


In order to demonstrate the distinctive character of its mark, the Guerlain company invoked certain specific characteristics of the lipstick tube, which, according to it, enabled it to recognize its distinctive character. His arguments were as follows: the tube does not contain any flat surface, it evokes the shape of a boat hull or a bassinet, it includes a rectangular notch on the side of the tube that can resemble a hinge as well as an oval-shaped relief located in the middle of the tube, allowing it to be locked and unlocked. The company also claimed that, given these different characteristics, the lipstick tube cannot be held upright, given the absence of any right angles.


Conversely, EUIPO maintained that some of the characteristics invoked by the company were only guided by the technical function of the product (like the oval shape in the middle of the tube) or were a simple adaptation of elements present. within competing products.


In response to these various arguments, the Court first of all recalls that the assessment of the distinctive character of a mark does not depend on the novelty or originality of the product, but rather on its ability to beform ”(§ 17).

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