On 14 July 2021, the General Court of the European Union ruled that Guerlain may register a trade mark for the three-dimensional shape of its Rouge G de Guerlain lipstick, as they found it met the 'distinctive character' threshold. 

Guerlain, a French perfumery, cosmetic and skincare house part of the LVMH group, attempted to originally register the shape in 2018. The EUIPO rejected the trade mark application on the basis of the shape lacking distinctive character and being indifferentiable from a typical lipstick shape.  

Guerlain unsuccessfully appealed this decision. The EUIPO Board of Appeal determined that Guerlain's shape was a mere edit of the standard shapes of lipstick cases on the market. The Board further reiterated its lack of distinctive character, emphasising that the shape was not distinctive enough to allow a consumer to identify the product as originating from Guerlain.

A further appeal was then made to the General Court where the EUIPO and Board of Appeal's decisions were reversed. The Court noted that distinctiveness differs from originality, and what needs to be demonstrated is that a three-dimensional shape of a product deviates significantly from what is commonplace of that product in its specific sector. 

Comparing the Guerlain mark to other lipstick shapes on the market, the General Court concluded that the mark was distinctive on the basis of:

1. Its 'boat hull' or 'baby carriage' like shape, instead of the usual cylindrical and parallelepiped shaped lipsticks commonly found on the market;
2. The unusualness of its small oval embossed shape on its surface, not being a common surface marking for lipsticks; and
3. Its functionality in not being able to be positioned vertically as a common lipstick would be, reinforcing the unusual visual appearance of its form. 

On the basis of the above, the General Court found that the shape of the mark would be memorable for consumers in the lipstick market to distinguish its Guerlain origin, and as such should be registered. 

The ruling sheds light on the distinctiveness assessment of three-dimensional marks, in that it should be performed with reference to common practice of the market and sector of the product at hand, and should thus be on a case-by-case basis. The aesthetic element of a mark should also be assessed through establishing whether the product can generate an uncommon visual effect on the general public. I believe a bassinet shaped, rocking lipstick case that cannot sit upright would do just the trick. 

Distinctive three-dimensional packaging is just as much of an indication to a brand as anything else. It will be intriguing to see the innovation in designs following this ruling, and what will be attempted to be registered on what basis. All aboard the Guerlain boat!