EUROPEAN UNION: Grounds for Refusal Take Shape

The Court of Justice of the European Union (CJEU) has clarified the weight of objective and subjective elements in shape marks when assessing absolute grounds for refusal. 

In a decision issued on April 29, 2020, the CJEU gave its judgment on a request for preliminary ruling in Case C-237/19 (Gömböc) on the interpretation of Article 3(1)(e)(ii) and (iii) of the previous Trademark Directive (EC) 2008/95.

Gömböc Kft applied for the registration of a 3D sign (  ) in Classes 14, 21, and 28. The Hungarian Intellectual Property Office (HIPO) rejected the application in all three classes on the basis of the legal provisions in the Hungarian Trademark Law which transposed the Directive 2008/95.

Gömböc’s actions against HIPO’s decision were dismissed at first and second instance. In the appeal, Hungary’s Supreme Court decided to stay the proceedings and referred the case to the CJEU. The three questions addressed to the CJEU concerned the criteria to assess absolute grounds for refusal of signs (1) consisting exclusively of a shape which is necessary to obtain a technical result; and (2) consisting exclusively of a shape which gives substantial value to the goods, in the case of 3D marks.

The CJEU held as follows:

• On Article 3(1)(e)(ii) (now Article 4(1)(e)(ii) of the Trademarks Directive (EU) 2015/2436): The assessment of whether a sign consists exclusively of the shape of goods, which is necessary to obtain a technical result, does not have to be limited to the graphic representation of that sign. Other information, such as the perception of the relevant public, can be used for the identification of its essential characteristics, but not for assessing whether such characteristics perform a technical function. In this case, the information must originate from “objective and reliable sources” and may not include the perception of the relevant public.
• On Article 3(1)(e)(iii) (now Article 4(1)(e)(ii) of the Trademarks Directive (EU) 2015/2436): The perception or knowledge of the relevant public as regards the product at issue may be taken into consideration to identify an essential characteristic of that shape. This ground for refusal may be applied if it is apparent from objective and reliable evidence that the consumer’s decision to purchase the product in question is to a large extent determined by that characteristic.
• On Article 3(1)(e)(iii) (now Article 4(1)(e)(ii) of the Trademarks Directive (EU) 2015/2436): This ground for refusal must not be applied systematically to a sign which consists exclusively of the shape of the goods where that sign enjoys protection as design or where the sign consists exclusively of the shape of a decorative item. 

The CJEU clarified that the objective behind the ground of refusal pursuant to Article 3(1)(e)(iii) (to prevent the exclusive and permanent right that a trademark 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 of each case.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

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