Lipstick in the shape of a baby carriage or boat hull can be protected as a 3D trademark
If a lipstick's design departs significantly from others, its three-dimensional shape can also be protected as a trademark. The General Court of the European Union decided in July 2021 that trademark protection is possible for the shape of the lipstick of the French cosmetics company Guerlain.
A basic prerequisite for trademark protection is that the mark has distinctive character. This is the central function of a trademark and means that the goods or services of one company can be distinguished from those of other companies by means of the trademark, thus enabling the customers to associate the goods or services to undertakings.
Guerlain's lipsticks have a special elongated, conical and cylindrical shape:
Since this shape distinguishes Guerlain's lipsticks from competitors' lipsticks, the company applied to the European Union Intellectual Property Office (EUIPO) to register the three-dimensional shape as a trademark in 2018.
Initially, the first examiner at the EUIPO refused trademark protection for lack of distinctiveness. The Board of Appeal upheld this decision on the grounds that the mark did not sufficiently depart from the norms and customs of the lipstick sector and thus from other common lipstick shapes.
An appeal by Guerlain against this decision was successful before the General Court of the European Union (General Court). According to the General Court, it is generally not sufficient for trademark protection that the shape was new and characterised by a high-quality design and beauty. However, the shape of this lipstick was capable of generating an objective and unusual visual effect in the perception of the relevant consumers and of associating the product with an undertaking.
The unusual shape, reminiscent of a boat hull or a baby carriage, clearly distinguishes Guerlain's lipstick from other lipsticks, which are usually cylindrical and parallelepiped in shape. Moreover, the presence of the small oval embossed shape at the base of the lipstick is unusual and contributes to the uncommon appearance of the mark applied for. The fact that the lipstick cannot be placed upright also reinforces the uncommon visual aspect of its shape.
In my opinion, the General Court is therefore right to find that the mark applied for has distinctive character because it departs significantly from the norms and customs of the lipstick sector and is different from any other shape available on the market. In practice, companies also invest in developing such uncommon designs to make their products stand out more from competing products. For lipstick buyers, this uncommon shape is certainly memorable and consumers will associate this lipstick with Guerlain. It is precisely this circumstance that fulfils the requirement of distinctiveness for registration as a three-dimensional trademark.
Such special product appearances can in some cases also be protected as designs, as you can read in an upcoming article by my colleague Valeria Miozzo.