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Executive Summaries Aug 3, 2021

A Lipstick Like No Other: Guerlain Obtains Registration of a Three-Dimensional Trademark

In September 2018, the French cosmetics company Guerlain, founded in 1828 in Paris, filed an application to have the shape of its Rouge G lipstick tube registered as a trademark.

Available in a multitude of colors and textures, this lipstick is recognizable by its oval-shaped tube, evoking the hull of a boat.

The European Union Intellectual Property Office initially refused to register the mark, finding that the shape of the lipstick tube was not distinctive. The First Board of Appeal of the European Office then confirmed the Office's decision. Not satisfied with this outcome, Guerlain appealed this decision to the Court of Justice of the European Union.

In support of its position, Guerlain argued, among other things, that its Rouge G lipstick tube does not include any right angles or flat surfaces, which makes it totally different from the tubes usually offered on the market, most often rectangular or cylindrical.

The Court of Justice of the European Union Rules in Favour of Guerlain

In its July 14, 2021 decision, the Court of Justice notes, among other things, that the tube's characteristics are such that it can only be presented horizontally, unlike other lipstick tubes, which are usually presented vertically. As the shape was different from the usual practice in the cosmetics industry, the Court concluded that it allowed consumers to differentiate Rouge G lipstick from competing products. Thus, the Court overruled the decision confirming the refusal of the registration of the mark, thus accepting the registration of Guerlain's tube shape as a three-dimensional mark.

What About Canada? 

The registration of three-dimensional shapes as trademarks is also allowed in Canada since 2019. However, the Canadian registrar may require proof of the distinctiveness of such a mark. In this case, it is possible to present arguments showing that the mark has inherent distinctiveness, as Guerlain did in the case discussed herein. It is also possible to show that the mark, although not inherently distinctive, has acquired distinctiveness through extensive and continuous use in Canada over at least five years. For example, Apple's power charging cube and Gucci's tigerhead horseshoe have been registered in Canada as three-dimensional marks.

If you have a product that distinguishes itself from the competition by its shape in the marketplace, contact our trademark team who will be pleased to assist you with your trademark matters in Canada, Europe and internationally.

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