3D Food

INTRODUCTION

On 23rd April 2020, the Court of Justice of the European Union (CJEU) issued a ruling in the
interpretation Article 4(1)(e)(ii) and (iii) of Directive 2015/2436. The ruling concerned proceedings
between Gömböc Ktf and the Hungarian Intellectual Property Office (HIPO) regarding the refusal of
registration of a National three dimensional trademark application in relation to goods in class 14
(decorative items), 21 (decorative crystalware and chinaware) and 28 (toys).

THE ISSUE

The registration was sought for an object known a Gömböc which is named after a traditional Hungarian food which resembles the shape applied for herein. The self-standing object is the “most sphere-like” body apart from spheres. The first Gömböc (001) was manufactured using 3D printing technology with a transparent material, showing the lack of counterweight. It is the first known 3D homogeneous object with only two equilibrium points (one stable and one unstable) which always returns to its initial position on a horizontal surface. Unlike roly-poly toys, the object lacks counterweight. Currently, the object is manufactured using different materials (e.g. hard rubber, aluminium, etc) and the prices vary from €40 to €1000.

The HIPO denied the registration under Class 28 as Article 2(2)(b) of the Hungarian Trademark Law prohibits the registration of signs exclusively of a shape which is necessary to obtain a technical result and in classes 14 and 21 based on the same provision, which prevents the registration of signs consisting exclusively of a shape which gives substantial value to the goods. On two unsuccessful appeals Gömböc Kft. Appealed to the Supreme Court of Hungary.

THE OBSERVATION OF COURT

The Court considered that the relevant public may not have the required expertise to accurately determine the technical features of the product and to what extent the shape of the product contributes to the technical result sought. It was questionable whether such an examination should be based solely on the graphic representation in the application for registration of the sign, since the contested shape of the product with a technical function could not be determined solely on the basis of the graphic representation of the shape of the product in the application for registration, but required
knowledge of additional information about the product itself.

The Court clarified the following points about grounds for refusal on the basis of shape of the product:

1. On the basis of the graphic representation contained in the register alone it may be determined whether the shape is necessary to obtain the technical result sought? Assessment doesn’t have to be limited to the graphic representation of the sign at issue.

2. May the perception of the relevant public also be taken into account? it may be considered only for the identification of the essential characteristics of the sign at issue.

3. Is it permissible to take into account the fact that the relevant public is aware that the shape for which registration is sought is necessary in order to obtain the technical result sought? only information derived from objective and reliable sources must be taken into consideration.

4. Aesthetic appearance of which gives the product a certain value? this ground must not be applied automatically when the sign at issue consists exclusively of the shape of a decorative item.

The Court also held that ground for refusal must not automatically be applied just because the sign in issue is already protected by a registered design. The CJEU confirmed the coexistence of several forms of legal protection, highlighting that the legal regimes concerning the registration of designs and trademarks “are independent, without any hierarchy existing as between”.

The case has returned to the Supreme Court of Hungary where the decision is keenly awaited.