GUERLAIN obtains registration of its three-dimensional lipstick-shaped trademark
On July 14, 2021, the General Court of the European Union annuls former EUIPO's decision refusing Guerlain’s trademark registration for its three dimensional lipstick
On September 17, 2018, GUERLAIN files a three-dimensional trademark registration application with the EUIPO for a lipstick.This request is refused for registration by the Office and the Board of Appeal on the grounds that it is devoid of any inherent distinctive character. GUERLAIN has maintained from the start that the shape is distinctive, because it "diverges significantly from the norm and habits of the sector".
On July 14, 2021, the General Court of the European Union annulled the decision judging that Guerlain’s trademark does indeed have an "unusual shape for a lipstick which differs from any other shape existing on the market" which gives it a distinctive character. Guerlain’s lipstick has a shape reminiscent of a boat hull. In addition, it has a small raised oval shape which contributes to the unusual appearance of the mark applied for and allows it to be registered.
"This major decision should allow the EUIPO to review its position in the examination of the protection of three-dimensional trademarks whose form diverges from the habits of the sector and allow companies and creators to protect themselves and finally obtain registration of such trademarks being essential bulwarks in the fight against counterfeiting ”declares Béatrice Daubin, Industrial Property Attorney and member of LAVOIX management committee.
LAVOIX advised GUERLAIN in this case with a team made up of Béatrice Daubin and David Millet.