shutterstock_1139644889_martyn_jandula-1-
23 April 2020TrademarksSarah Morgan

CJEU clarifies grounds of refusal in 3D TM suit

The Court of Justice of the European Union today handed down a  decision clarifying two grounds of refusal for a 3D trademark consisting of the shape of a product.

In February 2015, mathematical ornament company  Gömböc Kft applied to register a 3D sign as a mark for goods consisting of “decorative items” in class 14, as well as “articles of crystal and earthenware decoration” and “toys” falling under classes 21 and 28, respectively.

However, the Hungarian Intellectual Property Office (HIPO) rejected the application and the dispute made its way up to the Supreme Court of Hungary, which subsequently referred a series of questions to the CJEU.

Relevant public

First, the Hungarian court asked whether it was possible to take into account the fact that the relevant public knows that the form of the trademark is necessary to obtain the desired technical result.

HIPO had found that the 3D shape of the object enabled it to function like a toy whose characteristic is to always return to its point of stable equilibrium.

The office concluded that all the elements of the sign in question were designed for the purpose of fulfilling a technical function, so it couldn’t be registered as a trademark under article 3(1)(e)(ii) of Directive 2008/95.

According to the CJEU today, information other than this graphic representation alone, such as the perception of the relevant public, may be used to identify the essential characteristics of the sign in question.

Analogising to the Lego Juris (C‑48/09) case, the court said that the while the presumed perception of the sign by the relevant public is not a “decisive factor” in the application of this ground for refusal it may, “at most, constitute an element of useful assessment for the competent authority when the latter identifies the essential characteristics of the sign”.

Substantial value

The Supreme Court of Hungary also asked whether the ground of refusal under article 3(1)(e)(iii)—where the sign consists exclusively of a shape which gives substantial value to the goods—is applicable to 3D signs which consist exclusively of the shape of goods, when the competent authority has found that the form gives ‘substantial value’ only based on the public’s perception.

According to the CJEU, the substantial value of the product in question was conferred by the fact that this shape, which the sign consists exclusively of, has become the “tangible symbol of a mathematical discovery”.

The public’s perception can be taken into account to identify an essential characteristic of the shape, said the court, adding that the ground for refusal may be applied if it results from “objective and reliable evidence that the choice of consumers to buy the product in question is to a very large extent determined by this characteristic”.

Excluded from trademark law?

Finally, the referring court questioned whether the form of a product already enjoying the protection of design law is immediately excluded from the protection of trademark law.

The CJEU answered that EU IP law does not prevent the coexistence of several titles of legal protection, so the fact that the appearance of a product is protected as a design doesn’t necessarily imply that a sign consisting of the shape of that product cannot be registered as a trademark.

This conclusion also carried over, with the court finding that the ground for refusal to register must not be systemically applied to a sign consisting exclusively of the shape of the product where the aesthetic appearance of which gives the product a certain value.

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories sent like this straight to your inbox.

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk


More on this story

Trademarks
30 September 2021   Guerlain’s win at the EU General Court shines light on what makes a 3D shape mark ‘distinctive’ and protectable, Powell Gilbert associate William Hilson explains.
Trademarks
8 October 2020   The EU’s top court has said that trademarks intended to be applied to specific goods don’t need to be examined in light of standard commercial practices in a particular industry.
Trademarks
28 October 2022   EU General Court reverses decision by the EUIPO Second Board of Appeal | Proceedings centre on trademarked 3D ‘baby bottle’ shape used in confectionery packaging.