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On April 23, 2020, the Court of Justice of the European Union (“CJEU”) issued a judgment in the Gömböc case (C-237/2019), resolving the preliminary questions referred by the Curia, Hungary’s Supreme Court, on interpreting Article 3.1(e), indents (ii) and (iii) of Directive 2008/95/EC, of October 22, to approximate the laws of the Member States relating to trademarks that, among other matters, rejects registration of signs exclusively consisting of (ii) the shape of goods that is necessary to obtain a technical result, and (iii) the shape that gives substantial value to the goods. (The second and third indents of the current Article 4.1(e) of Directive 2015/2436 also establishes this, although referring not only to shape, but to “the shape, or another characteristic”).
The referred questions stemmed from a dispute after the Hungarian National Intellectual Property Office refused to register a three-dimensional trademark requested by Gömböc Kutató, Szolgáltató és Kereskedelmi Kft. as a national trademark for goods consisting of “decorative items,” as well as “decorative crystalware and chinaware” and “toys” as it considered that the sign to be registered represents a three-dimensional object whose shape serves, overall, to achieve its technical objective of always righting itself. The refusal was based on the average consumer’s knowledge of the characteristics and function of the shape of the product.
The first referred question asks whether, to establish whether a sign exclusively consists of the shape of goods 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.
The CJEU reasons that to apply the second indent of Article 3.1(e) correctly, a two-phase analysis must be conducted. In the first phase, identifying the essential characteristics of the sign in question, assessment should not be limited to the graphic representation of the sign, and other useful information can be used, for example, the perception of the relevant public. That being said, in the second phase, establishing whether the essential characteristics identified perform a technical function of the product, information based on data not apparent from the graphic representation of the sign can be taken into account, although this information must stem from objective sources and cannot include the perception of the relevant public. The refusal of registration is applicable if at least one of the essential characteristics required to obtain the technical result is visible.
The second referred question asks whether the perception of the relevant public regarding the product graphically represented by a sign, exclusively consisting of the shape of that product, can be taken into account to identify an essential characteristic of that shape and, ultimately, lead to refusal of registration under Article 3.1(e), indent (iii).
Following the criteria applied to the previous question, the CJEU states that the average consumer’s perception of the sign, while not in itself a decisive element when applying the ground for refusal, can be taken into account to identify the essential characteristics of that shape. That ground for refusal can, however, be applied when it is apparent from objective and reliable evidence that the consumer’s decision to purchase the product in question is largely determined by one or several characteristics of the shape of which the sign exclusively consists. This means that other characteristics of the product not related to its shape, such as its technical qualities or reputation, are irrelevant.
Continuing with the interpretation of Article 3.1(e), indent (iii), the third referred question asks whether the ground for refusal of registration must automatically be applied to a sign exclusively consisting of the shape of a product when that product’s appearance is protected under the law on designs and models or when the sign exclusively consists of the shape of a decorative item.
According to the CJEU, the fact the appearance of a product is protected as a design or model does not in itself preclude the registration of a sign consisting of the shape of that product as a trademark. The objective of the ground for refusal, namely, to prevent the exclusive and permanent right that a trademark provides serving to indefinitely extend the life of other rights for which the legislator has sought to impose time limits, does not prevent the coexistence of several forms of legal protection.
Likewise, it rules out automatically refusing to register a sign exclusively consisting of the shape of a decorative item, which requires objective and reliable evidence showing that the shape gives substantial value to the product and leads consumers to choose that product.
This judgment is added to the case law on the subject, providing interpretative criteria that will assist national courts in resolving disputes on this special category of trademark.
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