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WHY THE 3D GOMBOC SHAPE IS NOT A TRADEMARK?

1. Facts
The “Gömböc” is a mathematical homogeneous body that when resting on a flat surface has just one stable and one unstable point of equilibrium. The object is the first of its kind.

In 2015, Gömböc Kft. applied for a Hungarian national trademark of the 3D shape for decorative items in Class 14 and decorative crystal ware and chinaware and toys in Classes 21 and 28.

The Hungarian IP Office rejected that application which, due to its external design and the homogeneous material used, always returns to its position of balance, because the shape for which protection was sought serves, overall, to achieve a technical objective of always righting itself. To assess the registrability of the sign, the Hungarian IP Office relied on the knowledge of the characteristics and the function of the shape of the product that the average consumer was able to obtain from the applicant’s website and from the considerable publicity of the product in the media, as well on the relevant public’s knowledge to establish that the shape gives the goods substantive value.

Gömböc Kft. appealed the decision, which was rejected both at first and second instance. When appealed again, the Hungarian Supreme Court, sought clarification relating to the grounds for refusal of registration with respect to shapes with the Court of Justice of the European Union (CJEU).

The Judgement of the CJEU rendered on April 23, 2020 ruled that:

In order to establish whether the shape of a sign is necessary to achieve a technical result, assessment does not need to be limited to the graphic representation of that sign.
The perception or knowledge of the relevant public may be taken into consideration but is not conclusive when identifying the essential characteristics of that shape.
Registration under the relevant ground for refusal should not be systematically applied to a shape where that sign enjoys protection under the Designs Directive or where the sign consists exclusively of the shape of a decorative item.
2. Questions for Preliminary Ruling
whether Article 3(1)(e)(ii) of Directive 2008/95/EC must be interpreted as meaning that, in order to establish whether a sign consists exclusively of the shape of the goods which is necessary to obtain a technical result, assessment must be limited to the graphic representation of the sign, or whether other information, such as the perception of the relevant public, should also be taken into account;
whether the ground of refusal of Article 3(1)(e)(iii) Directive 2008/95/EC is applicable to a sign which consists exclusively of the shape of the goods and in respect of which it is only on the basis of the perception or knowledge of the relevant public as regards the product graphically represented that the competent authority reaches the view that the shape gives substantial value to that product;
whether the ground of refusal of Article 3(1)(e)(iii) Directive 2008/95/EC must be applied systematically to a sign which consists exclusively of the shape of the product where the appearance of that product enjoys protection under the law relating to designs or where the sign consists exclusively of the shape of a decorative item.
3. CJEU Decision
1. The correct application of the ground for refusal of Article 3(e)(ii) Directive 2008/95/EC requires that the authority deciding on the application for registration of the sign first, properly identify the essential characteristics of the three-dimensional sign and, second, establish whether they perform a technical function of the product concerned (see, by analogy, 14/09/2010, C 48/09 P, Lego brick, EU:C:2010:516 § 68, 72, 84; 10/11/2016, C 30/15 P, CUBES (3D), EU:C:2016:849, § 40, 42, 45, 52) (§ 25-28).

As regards the first step, the competent authority may either base its assessment directly on the overall impression produced by the sign or examine each of the components of the sign in turn. Consequently, the identification of the essential characteristics of a three-dimensional sign may be carried out by means of a simple visual analysis of the sign or be based on a detailed examination, such as surveys or expert opinions, or data relating to intellectual property rights conferred previously in respect of the goods concerned (14/09/2010, C 48/09 P, Lego brick, EU:C:2010:516, § 70-71) (§ 29- 30). The presumed perception by the relevant public is not a decisive factor when applying that ground for refusal, and may, at most, be a relevant criterion of assessment for the competent authority when identifying the essential characteristics of the sign (14/09/2010, C 48/09 P, Lego brick, EU:C:2010:516, § 76) (§ 31).

As regards the second step of the analysis, the ground for refusal – pursuant to its objective to prevent any monopoly on technical solutions or functional features of a product – may be applied when the graphic representation of the shape of the product only allows part of the shape to be seen, provided that the visible part of the shape is necessary to obtain the technical result sought by that product, even if it is not sufficient, on its own, to obtain that result (§ 32). The determination (by the competent authority) of the technical functions of the product must be based on objective and reliable information such as that given in the description of the product submitted at the time of filing the application for registration, in data relating to intellectual property rights conferred previously in respect of that product, by looking at surveys or expert opinions on the functions of the product, or in any relevant documentation, such as scientific publications, catalogues and websites, which describes the technical features of the product (§ 34). Information concerning any knowledge the relevant public may have of the technical functions of the product would involve subjective factors, and potentially give rise to uncertainty as to the extent and accuracy of that public’s knowledge (§ 35). Moreover, the relevant public does not necessarily have the required expertise to enable it to determine with accuracy what the technical features of the product in question are and the extent to which the shape of that product forming the sign contributes to the technical result sought (§ 36).

2. The application of the ground for refusal of Article 3(1) (e)(iii) Directive 2008/95/EC is based on an objective analysis, intended to demonstrate that, owing to its characteristics, shape has such a great influence on the attractiveness of the product that restricting the benefit of the shape to a single undertaking would distort the conditions of competition on the market concerned (§ 40). Therefore, it must be apparent from objective and reliable evidence that a consumer’s decision to purchase the goods in question is, to a very great extent, determined by one or more features of the shape that alone forms the sign (§ 41). On the other hand, characteristics of the product not connected to its shape, such as technical qualities or the reputation of the product, are irrelevant (§ 42). Although the presumed perception of the sign by the average consumer is not, in itself, a decisive element when applying the ground for refusal set out in Article 3(1)(e)(iii) of Directive 2008/95/EC, it may, nevertheless, be a useful criterion of assessment for the competent authority in identifying the essential characteristics of that sign (18/09/2014, C 205/13, Tripp Trapp, EU:C:2014:2233, § 34).

In a situation such as that in the main proceedings, in light of the relevant public’s perception of the sign and the knowledge of that public, the competent authority was allowed to find that the shape, which alone forms the sign, is the tangible symbol of a mathematic discovery. Since it took the view that that fact makes the shape special and striking, it was entitled to conclude that it is an essential characteristic and that it was necessary to assess whether, as a result of that fact, the shape, which alone forms the sign, gives substantial value to the goods (§ 45). The fact that such a characteristic does not, in itself, concern the aesthetic merits of the shape does not exclude the application of Article 3(1)(e)(iii) of Directive 2008/95/EC (§ 47).

3. The objective of the ground for refusal in Article 3(1)(e)(iii) of Directive 2008/95/EC does not mean that EU intellectual property law prevents the coexistence of several forms of legal protection (for the protection of designs Article 16 of Directive 98/71/EC) (§ 50-52). The fact that the appearance of a product is protected as a design does not prevent a sign consisting of the shape of that product from benefiting from protection under trademark law, provided that the conditions for registration of that sign as a trademark are satisfied (§ 53). Article 3(1) (e)(iii) of Directive 2008/95/EC may, inter alia, apply to a sign consisting exclusively of the shape of a product with an artistic or ornamental value where it is apparent from objective and reliable evidence that the consumer’s decision to purchase the product is based to a very large extent on one or more characteristics of that shape (§ 58-59).

4. Conclusion
The decision provides precious guidance on the relationship between objective and subjective considerations when assessing the technical functionality of a shape and the extent to which a shape gives substantial value to the goods.

It must also be noted that the decision addresses the issue of cumulative IP rights. The Court confirms that shapes can benefit from simultaneous protection (i.e. Design and Trademark protections).

Anne Desmousseaux

See: 23/04/2020, C 237/19, Gömböc Kutató, EU:C:2020:296

Published on July 7 2020 by ALATIS IP.

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