3D Trade Marks: Further guidance from the CJEU regarding shapes necessary to give a technical result

The CJEU has concluded that factors in addition to the graphic representation of a sign could be relevant to the assessment of whether a sign consisted exclusively of the shape of goods which was necessary to get a technical result. Further, the fact that a sign was protected by other intellectual property rights, such as designs, did not mean that trade mark protection could not co-exist (Gömböc Kutató, Szolgáltató és Kereskedelmi Kft v Szellemi Tulajdon Nemzeti Hivatala (Case C-237/19) EU:C:2020:296 (23 April 2020)).

The Hungarian National Intellectual Property Office referred questions to the CJEU following its rejection of an application for registration as a trade mark of a sign representing a three-dimensional object which, due to its external design and the homogeneous material used, always returned to its position of balance. The sign was represented as follows:

The CJEU has added to the sizeable volume of case law on the interpretation of the Trade Marks Directive (2008/95/EC), clarifying further how the grounds for refusal or invalidity in relation to signs that consist exclusively of the shape of goods that are necessary to get a technical result, or the shape that gives substantial value to the goods, should be interpreted.

Shapes necessary to give a technical result

The CJEU ruled that Article 3(1)(e)(ii) of the 2008 Trade Marks Directive (now Article 4(1)(e)(ii) of the Trade Marks Directive ((EU) 2015/2436) (“2015 Trade Marks Directive”)) did not have to limit the assessment of whether a sign consisted exclusively of the shape of goods which was necessary to get a technical result to the graphic representation of the sign. Other information, such as the perception of the relevant public, might be used to identify the essential characteristics of the sign, although when it comes to establishing whether those characteristics performed a technical function of the goods, such information must originate from objective and reliable sources (and so could not include the perception of the relevant public).

The CJEU also considered Article 3(1)(e)(iii) of the 2008 Trade Marks Directive (now Article 4(1)(e)(iii) of the 2015 Trade Marks Directive), and held that, where a product was represented graphically by a sign that consisted exclusively of the shape of the product, the perception or knowledge of the relevant public regarding that product might be taken into consideration to identify an essential characteristic of the shape. Therefore, for the ground to apply, it must be apparent from objective and reliable evidence that the consumer's decision to purchase the product was, to a large extent, determined by one or more features of the shape that alone formed the sign. Other characteristics of the product not connected to its shape, such as its technical qualities or reputation, are irrelevant.

Further, the CJEU ruled that Article 3(1)(e)(iii) also meant that the ground for refusal must not be applied systematically to a sign which consisted exclusively of the shape of the goods, where the sign enjoyed protection under the law relating to designs or where the sign consisted exclusively of the shape of a decorative item. The objective behind this ground of refusal (to prevent the exclusive and permanent right that a trade mark confers from serving to extend indefinitely the life of other, time limited, rights) did not mean that EU intellectual property law prevented the coexistence of several forms of legal protection. For the ground to apply, it must be apparent from objective and reliable evidence that the consumer's decision to purchase the product was based to a very large extent on one or more characteristics of the shape, and this was a matter for the competent authority to assess on the facts.

See our previous updates on cases relating to shape marks here and here.