http://ipkitten.blogspot.com/2020/05/the-cjeu-again-on-3d-trademarks-gomboc.html
On 23 April 2020, the Court of Justice of the European Union (CJEU) issued its ruling in Gömböc, C-237/19, ECLI:EU:C:2020:296, concerning the interpretation of Article 3(1)(e)(ii) and (iii) of the previous Trade Mark Directive 2008/95 (now Article 4(1)(e)(ii) and (iii) of Directive 2015/2436).
The request for a preliminary ruling was made in proceedings between Gömböc Ktf and the Hungarian Intellectual Property Office (HIPO, Szellemi Tulajdon Nemzeti Hivatala) regarding the registration refusal of a national three-dimensional trademark application for the sign pictured below in relation to goods in classes 14 (decorative items), 21 (decorative crystalware and chinaware) and 28 (toys).
Background
The shape, for which registration was sought, is a self-standing object known as Gömböc (pronounced as ‘goemboets’), which “is the most sphere-like body (apart from spheres)”. The object was named after the traditional Hungarian food Disznósajt, a pork cheese with a sphere-resembling shape also referred to as Gömböc, a diminutive of the Hungarian word gömb which means sphere.
The story behind the object is quite interesting. In 1995, famous Russian mathematician Vladimir Igorevich Arnold wondered whether three-dimensional objects with only two equilibrium points exist: one stable (S) and one unstable (I) equilibrium point (1,1). In the mathematical field, it was believed that the “minimal number should be 4”.
However, Hungarian engineers Gábor Domokos and Péter Várkonyi proved such assumption was wrong by creating the Gömböc: the first known 3D homogenous object with only two equilibrium points (one stable and one unstable) which always returns to its initial position on a horizontal surface. Unlike roly-poly toys, the object lacks counterweight.
The first Gömböc (001) was manufactured using 3D printing technologies with a transparent material, showing the lack of counterweight. Currently, the object is manufactured using different materials (e.g. hard rubber, aluminium, etc) and the prices vary from €40 to €1000 (more details on the object here and the interactive map showing how many Gömböcs there are worldwide here).
The registration refusal by the HIPO
On 5 February 2015, Gömböc Kft. filed 3D trademark application M1500325 the Gömböc sign:
The HIPO denied the registration for goods in class 28 on the ground of the second indent of Article 2(2)(b) of the Hungarian Trade Mark Law, which prohibits the registration of signs consisting exclusively of a shape which is necessary to obtain a technical result. Whereas, the registration was refused for goods in classes 14 and 21 based on the third indent of the same provision, which prevents the registration of signs consisting exclusively of a shape which gives substantial value to the goods. The Hungarian provisions had been adopted to transpose Article 3(1)(e)(ii) and (iii) of the previous Trade Marks Directive 2008/95 into Hungarian law.
To assess the registrability of the sign, the HIPO relied on the perception that the average consumer would receive from Gömböc’s website and the publicity that the product had received.
The applicant appealed the HIPO’s decision. Further to two unsuccessful appeals, Gömböc Kft. appealed to the Supreme Court of Hungary.
The CJEU preliminary ruling
The Supreme Court of Hungary stayed proceedings and referred the following questions to the CJEU:
“(1) Must Article 3(1)[(e)(ii)] of [Directive 2008/95], in the case of a sign consisting exclusively of the shape of the product, be interpreted as meaning that
(a) it is on the basis of the graphic representation contained in the register alone that it may be determined whether the shape is necessary to obtain the technical result sought, or [The Court replied in the negative and clarified the assessment doesn’t have to be limited to the graphic representation of the sign at issue]
(b) may the perception of the relevant public also be taken into account? [The Court replied that it may be considered only for the identification of the essential characteristics of the sign at issue]
In other words, is it permissible to take into account the fact that the relevant public is aware that the shape for which registration is sought is necessary in order to obtain the technical result sought? [The Court replied in the negative and clarified that only information derived from objective and reliable sources must be taken into consideration]
(2) Must Article 3(1)[(e)(iii)] of [Directive 2008/95] be interpreted as meaning that that ground for refusal is applicable to a sign that consists exclusively of the shape of the product where it is [only] by taking into account the perception or knowledge of the buyer as regards the product that is graphically represented that it is possible to establish that the shape gives substantial value to the product? [The Court replied that it may be taken into account to identify the essential characteristics of the sign and clarified that this ground might be applied if it is apparent from objective and reliable evidence that the consumer’s decision to purchase the product is to a large extent determined by an essential characteristic of that shape]
(3) Must Article 3(1)[(e)(iii)] of [Directive 2008/95] be interpreted as meaning that that ground for refusal is applicable to a sign, consisting exclusively of the shape of a product
(a) which, by virtue of its individual character, already enjoys the protection conferred on designs, or [The Court replied in the negative and clarified that this ground must not be applied automatically when the sign at issue is also protected by a registered design right]
(b) the aesthetic appearance of which gives the product a certain value? [The Court replied in the negative and clarified that this ground must not be applied automatically when the sign at issue consists exclusively of the shape of a decorative item]”
The reasoning
As regards the first question, the CJEU confirmed that the competent authority must carry out a two-step inquiry for the correct application of the ground for refusal established in Article 3(1)[(e)(ii):
- The first step refers to the proper identification of the essential characteristics of the 3D sign at issue. The identification of the essential characteristics must begin with the assessment of the graphic representation but, depending on the circumstances, the competent authority may also take into account other useful information for a correct identification of such characteristics, including surveys, expert opinions, or data regarding IP rights previously granted.
- The second step requires considering whether such characteristics perform a technical function. Even though all the essential characteristics required to obtain a technical result are not shown in the graphic representation, the ground for refusal established in Article 3(1)[(e)(ii) may apply, “provided that at least one of the essential characteristics required to obtain that technical result is visible” [para. 32].
Hence, the perception of the relevant public may be a relevant criterion only for the identification of the essential characteristics but not for assessing whether such characteristics perform a technical function [para. 31].
The Court considered that the relevant public may not have the required expertise to accurately determine the technical features of the product and to what extent the shape of the product contributes to the technical result sought. So, any knowledge that they may have in such respect may involve subjective factors, “potentially giving rise to uncertainty”.
Therefore, only objective and reliable information must be taken into consideration, including data regarding IP rights previously granted, expert opinions, scientific publications, catalogues and websites, which describes the technical features of the product [Merpel wonders which requirements must fulfil a website to be considered as an objective and reliable source for such purposes] [para. 34, 35, 36].
As regards the second question, the CJEU held that the perception or knowledge of the relevant public is not “a decisive element when applying the ground for refusal set out in Article 3(1)(e)(iii)”, but rather it may be taken into account by the competent authority for the identification of the essential characteristics of the sign at issue. In the main proceedings, the knowledge of the relevant public related “to the fact that the product depicted in the sign at issue has become the tangible symbol of a mathematical discovery which addresses questions raised in the history of science”.
The ground for refusal in Article 3(1)(e)(iii) may also apply “if it is apparent from objective and reliable evidence that the consumer’s decision to purchase the product in question is to a large extent determined by that characteristic”. Characteristics of the product not related to its shape are irrelevant to such assessment (e.g. technical qualities or reputation of the product).
As regards the third question, the Court clarified that the ground for refusal established in Article 3(1)(e)(iii) must not be applied automatically when the sign at issue is also protected by a registered design right. The CJEU confirmed the coexistence of several forms of legal protection, highlighting that the legal regimes concerning the registration of designs and trade marks “are independent, without any hierarchy existing as between”.
Thus, the existence of registered Community designs over the Gömböc (RCD 000677083-0001 and 000677091-0001) doesn’t imply the automatic refusal for trade mark registration. In this sense, “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 trade mark law, provided that the conditions for registration of that sign as a trade mark are satisfied” [para. 53].
Furthermore, the ground for refusal established in Article 3(1)(e)(iii) must not be applied automatically when the sign at issue consists exclusively of the shape of a decorative item: rather, “it must be apparent from objective and reliable evidence that the consumer’s decision to purchase the product in question is based to a very large extent on one or more characteristics of that shape” [para 59].
The Court stated the substantial value of decorative items may result from factors not related to its shape, such as “the story of its creation, its method of production, whether industrial or artisanal, the materials that it contains, which may be rare or precious, or even the identity of its designer” [para. 60].
The interpretation of the grounds for refusal concerning the prohibition of registration of signs consisting exclusively of the shape of goods which is necessary to obtain a technical result, and which gives substantial value to the goods has been problematic (see the IPKat posts here, here, here, and here). Now, the case will return to the Supreme Court of Hungary, whose decision is now keenly awaited.
Credits:
The first image is from Domokos / Public domain.
The second image is from Kicsinyul / CC BY-SA.
The third image is from the 3D trademark application M1500325 filed by Gömböc Kft, HIPO (Hungarian Intellectual Property Office) database.
The fourth image is courtesy of Lidia Velázquez.
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