You couldn't be Guerlain even if you tried
Assessing the distinctive character of a brand is not easy, and highly subjective. This is particularly true for trademarks consisting of the shape of the product or its packaging. However, if you are a prestigious economic operator like Guerlain, one of the flagship brands of the Perfumes and Cosmetics branch of the LVMH group, it is clearly easier to have the distinctive function of your packaging recognized.
As a reminder, trademark law in the European Union makes it possible to protect the shape of the packaging of a product, insofar as this shape is likely to exercise the distinctive function of a trademark, i.e. the ability to identify the origin of a product.
Packaging has a conditioning and protective function but it can also, under certain conditions, allow the public to recognize the product and attribute it to a specific company.
Among the most famous examples, the shape of Perrier bottles, or the shape of Cointreau bottles.
The conditions for the registration of a mark to be possible are as follows :
- The shape must not be imposed by the very nature of the product, nor necessary to obtain a technical result ;
- It must not be usual, necessary or descriptive for the type of product it packages.
This was recalled by the European Union Intellectual Property Office (EUIPO), in rejecting the application for registration of the form of packaging known as “Boat Hull” of the last Guerlain lipstick.
The Examiner of the European Union Intellectual Property Office (EUIPO) primarily relied on the following grounds :
“The sign for which protection is sought, which consists of a simple rectangular shape with rounded edges on which cut-outs appear to be present from all its angles in 5 different views, consists simply of a combination of presentation elements of a case or ‘a tube of lipstick which the relevant consumer will perceive as typical of the forms of packaging of the goods at issue.”
In support of this argument, the examiner of the European Union Intellectual Property Office (EUIPO) had compared the Guerlain packaging to several other brands packaging, including Givenchy ; this comparison showing the banality or at least the usual character for this type of packaging.
This decision was in line with the case law of the European Union Intellectual Property Office which is summarized as follows in its trademark guidelines :
“It is appropriate to examine the criteria of distinctiveness of the shape itself. The fundamental test is to determine whether the shape differs materially from the basic shapes, common or expected by the consumer, in such a way that it enables the latter to identify the goods solely by their shape and to repeat the purchase experience of these products if it turned out to be positive. Crocodile-shaped frozen vegetables are a particularly relevant example in this regard.
The examination of the distinctive character of three-dimensional marks consisting exclusively of the shape of the goods themselves is based on the following criteria :
- a shape is devoid of distinctive character when it is a basic shape [19/09/2001, T-30/00, red-white squared washing tablet (fig.), EU:T:2001:223 ] or a combination of basic shapes [13/04/2000, R 263/1999-3, Tönnchen (3D)] ;
- to be distinctive, the mark must deviate significantly from the form expected by the consumer and from the norm or habits of the sector. The closer the shape is to the most probable shape that the product in question will take, the more likely it is that the said shape is devoid of distinctive character (07/10/2004, C-136/02 P, Torches, EU:C: 2004:592, § 31) ;
- It is not sufficient that the shape is simply a variant of a usual shape or of one of the shapes encountered in a sector characterized by an enormous diversity of design (07/10/2004, C-136/02 P, Torches , EU:C:2004:592, § 32; 07/02/2002, T-88/00, Torches, EU:T:2002:28, § 37)”
The Appeals Chamber of the European Union Intellectual Property Office upheld the Examiner’s decision, and an appeal was brought before the General Court of the European Union.
The latter recalled that the assessment of the distinctive character is not based on the originality or the lack of use of the mark applied for in the field to which it belongs, and that the mark applied for must necessarily diverge significantly from the standard or habits of the sector concerned.
The General Court of the European Union finally ruled that the relevant public will be surprised by this easily memorable shape, and will perceive it as significantly diverging from the norm and habits of the lipstick sector, being able to indicate the origin of the products concerned.
Therefore, the Court of the European Union considered that the mark applied for had a distinctive character allowing it to be registered, it being specified that the European Union Office for Intellectual Property has the possibility of appealing against this first instance decision.
This case may not be over, to be continued…
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