The Court of Justice of the European Union (CJEU) has handed down its decision in the 'gömböc' case, clarifying two separate grounds for refusal for a trade mark application based purely on the shape of a product. The 'gömböc' (pronounced: ‘goemboets') is the first known homogenous object with one stable and one unstable equilibrium point.
In 2015, Gömböc Kft. applied for a Hungarian national trade mark of the 3D shape in classes 14, 21 and 28, supported by the graphic representation shown below.
The Hungarian Intellectual Property Office refused registration on the basis that the shape of the goods was both exclusively necessary to obtain a technical result and to give substantial value to the goods. The applicant appealed the decision and the Supreme Court of Hungary referred the following questions to the CJEU:
Whether the 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 when determining whether a sign consists exclusively of the shape of goods, which is necessary to obtain a technical result?
In response to this question, the CJEU held that the graphic representation alone need not be the only basis for assessing whether a shape is necessary to obtain a technical result, and that the perception of the relevant public could be taken into account. However, the perception of the public and the determination of the technical functions of the product in question must be based on objective and reliable information and evidence.
Whether the ground for refusal based on the shape’s giving substantial value to the product is applicable if it is only the perception or knowledge of the relevant public that the competent authority relies on when concluding that the shape gives substantial value to the product?
In response to this question, the CJEU held that, whilst the perception of the public may be taken into consideration, 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.
Whether the ground for refusal based on the shape’s giving substantial value to the product automatically applies when the shape is protected by other intellectual property rights or it is the shape of a decorative item?
In response to this question, the CJEU held that, even though it is in the public interest to prevent the perpetuation of time-limited intellectual property rights by means of trade mark protection, this objective does not prevent the coexistence of several forms of legal protection. Further, ‘substantial value’ may apply to decorative items but does not do so automatically. In addition, decorative items may be given substantial value by factors other than their shape such as the story behind the product’s creation, method of production, materials used or the identity of the designer. Therefore, the competent authorities should not refuse to register a product shape as a trade mark merely because the same shape is protected by design rights or because the product is a decorative item.
It is clear that the competent authorities are not merely limited to the graphical representation of the shape when assessing whether it is ‘necessary to obtain a technical result’ or ‘gives substantial value to the product’. However, whilst the essential characteristics of the shape can be identified through the eye of the relevant public and non-visual factors may also be considered, authorities must rely on objective and reliable information and evidence when determining the relationship between the identified characteristics of the shape and the product itself.
The case has now been referred back to the Supreme Court of Hungary for a decision.
This article has been co-written with Georgina Wade, a trainee solicitor in the commercial, IP and IT team.