Gömböc: CJEU provides clarity on the protectability of 3D trade marks

On 23 April 2020, the CJEU handed down its judgment in the Gömböc[1] case, which relates to a referral from the Hungarian Supreme Court. The CJEU answered three questions relating to the grounds for refusal of registration under Article 3(1)(e) of Directive 2008/95 with respect to shapes. Firstly, the CJEU held that, in order to establish whether a sign’s shape is necessary to achieve a technical result, assessment does not need to be limited to the graphic representation of that sign. Secondly, 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. Finally, 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.

The judgment is a welcome one and provides clarity on the relationship between objective and subjective considerations when assessing the technical and aesthetic functionality of a shape for the purposes of Directive 2008/95. The decision also touches upon the issue of cumulating IP rights, which may be expanded upon in the pending Brompton Bicycle referral. The CJEU’s approach in Gömböc suggests that an earlier design right should not, of itself, lead to the systematic exclusion of a later trade mark right and that it would be inappropriate to conflate the requirements for protection under those different rights. It will be interesting to see how the Court addresses this point in Brompton Bicycle and whether they will extend their approach in Gömböc in respect of other IP rights going forwards.

Background

The ‘Gömböc’ is a mathematical ‘self-righting’ object, meaning it will always eventually fall to rest in the same position, due to it having exactly one stable and one unstable equilibrium point. The object is the first of its kind and operates in a similar way to a tortoise shell, which is shaped to assist the animals when self-righting themselves.

In 2015, Gömböc Kft. applied for a Hungarian national trade mark of the 3D shape in class 14 “decorative objects”, class 21 “decorative objects made of glass and ceramics” and class 28 “toys”.

The Hungarian Intellectual Property Office rejected the application on the grounds that the shape of the Gömböc gave ‘substantial value’ to the items within classes 14 and 21, pursuant to Article 3(1)(e)(iii) of Directive 2008/95,[2] and that it was ‘necessary to achieve a technical function’ for that of class 28, pursuant to Article 3(1)(e)(ii).

Gömböc Kft. appealed the decision, which was rejected both at first instance and at the Metropolitan Court of Appeal. Gömböc Kft. appealed again to the Hungarian Supreme Court, which referred three questions to the CJEU for a preliminary ruling.

Referral

The referring Court sought clarification from the CJEU in relation to the following questions:

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:
   1. 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
   2. may the perception of the relevant public also be taken into account?
2. 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?
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 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?
4. 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
   1. which, by virtue of its individual character, already enjoys the protection conferred on designs; or
   2. the aesthetic appearance of which gives the product a certain value?

CJEU Decision

The first question

The Court stated that the correct application of the ground for refusal of registration set out in Article 3(1)(e)(ii) of Directive 2008/95 required the referring court to carry out a two-step inquiry: firstly, the competent authority must identify the essential characteristics of the 3D shape; and, secondly, it must establish whether they perform a technical function of the product concerned.

The purpose of this ground is to ensure trade mark law is not used as an obstacle to prevent competitors from freely offering for sale products which incorporate a technical solution in competition with the proprietor of a trade mark.

The question from the referring court here was whether such an assessment should be based on a simple visual analysis of the sign or if the perception of the relevant public could also be considered. The Court referred back to its decisions in Philips,[3] Lego Juris[4] and Simba Toys,[5] and held that, whilst the first step must begin in principle with the assessment of the graphic representation of the sign, other useful information may also be used by the competent authority to identify the shape’s essential characteristics, including the perception of the relevant public.

However, when addressing whether those characteristics perform a technical function, the Court held that, beyond what is apparent from the sign’s graphic representation, only information which originates from objective and reliable sources may be taken into consideration. Whilst this might include expert opinions and scientific publications, the Court deemed that the necessary objectivity could not properly be derived from the perception of the relevant public.

The second question

The second question was in relation to Article 3(1)(e)(iii) of Directive 2008/95, which concerns shapes whose characteristics influence the attractiveness of the product, such that it adds ‘substantial value’ to the goods and a trade mark in that shape would distort competition in the relevant market. Here, the technical functionality of the shape is irrelevant.

The referring court therefore asked whether the ground for refusal of registration provided for in Article 3(1)(e)(iii) 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 that the shape may be regarded as giving substantial value to the product. In this regard, it was in the knowledge of the relevant public that the product was a tangible symbol of a mathematical discovery.

The Court referred back to its decisions in Hauck,[6] in which it held that, although the presumed perception of the sign by an average consumer is not a decisive element for an assessment under Article 3(1)(e)(iii), it may nevertheless be a useful criterion in identifying the essential characteristics of the sign.

In order to apply the ground for refusal, however, the Court held that, whilst the perception of the public may be taken into consideration here, it must be apparent from objective and reliable evidence that the consumer’s decision to purchase the product is to a large extent determined by the essential characteristics of the shape.

Third question

The final question of the referring court concerned the interaction between Article 3(1)(e)(iii) of Directive 2008/95 and the protection afforded under European design law, as well as the application of Article 3(1)(e)(iii) where the relevant sign consists exclusively of the shape of a decorative item.

In answering the first strand of this question, the Court referred to Article 16 of the Designs Directive,[7] which provides that the directive is independent of and without prejudice to other European IP rights. The Court highlighted that the analysis required to be registered as a design is different from that to be registered as a trade mark, indicating that no conflict would necessarily exist in this case.

With regards to the second strand of the third question of the referring court, the Court acknowledged that Article 3(1)(e)(iii) of Directive 2008/95 may apply to a shape with an artistic or ornamental value. However, the Court stated that this does not mean that ‘decorative’ items (particularly for the purposes of classes 14 and 21) should automatically be rejected under this ground of refusal; instead, it must again be apparent from objective and reliable evidence that the consumer’s decision to purchase the product is primarily based on the essential characteristics of the shape in question.

Due to the other factors that may afford value to a product beyond its shape, such as the story of its creation, its method of production, or the identity of its designer, the Court therefore held that Article 3(1)(e)(iii) should not be applied systematically to a sign which enjoys protection under the Designs Directive or consists exclusively of the shape of a decorative item.

Key Messages

The decision provides some clarity 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, within the meaning of Directive 2008/95. In essence, whilst the perception or knowledge of the public may be relevant when assessing the essential characteristics of a sign, the application of the grounds for refusal under Article 3(1)(e)(ii) and Article 3(1)(e)(iii) ultimately require an objective analysis.

The decision also touches upon the issue of cumulating IP rights, as the Court held that shapes are not precluded from benefiting from simultaneous protection. This may be expanded upon in the pending Brompton Bicycle[8] referral, in which the court is expected to address the relevance of an expired patent in determining the subsistence of copyright in the relevant object. The Court’s approach in Gömböc suggests that an earlier design right should not, of itself, lead to the systematic exclusion of a later trade mark right and that it would be inappropriate to conflate the requirements for protection under those different rights. It will be interesting to see how the Court addresses this point in Brompton Bicycle and whether they will extend this approach in Gömböc in respect of other IP rights going forwards.

Article co-authored by Fareed Anees.

[1] Case C‑237/19, Gömböc Kutató, Szolgáltató és Kereskedelmi Kft. v Szellemi Tulajdon Nemzeti Hivatala, EU:C:2020:296.

[2] Directive 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trade marks.

[3] CJEU judgment of 18 June 2002, Philips, C-299/99, EU:C:2002:377.

[4] CJEU judgment of 14 September 2010, Lego Juris v OHIM, C-48/09 P, EU:C:2010:516.

[5] CJEU judgment of 10 November 2016, Simba Toys v EUIPO, C-48/09 P, EU:C:2016:849.

[6] CJEU judgment of 18 September 2014, Hauck, C-205/13, EU:C:2014:2233.

[7] Directive 98/71/EC of 13 October 1998 on the legal protection of designs.

[8] Request for a preliminary ruling from the tribunal de l’enterprise de Liège (Belgium) lodged on 31 December 2018, Brompton Bicycle Ltd v Chedech/Get2Get, Case C-833/18.