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Registration of a 3D trademark consisting exclusively in the shape of a product

European Court of Justice, Case no. C237/19 of 23 April 2020

date: 02.05.2020
Area: Intellectual Property

The European Court of Justice has ruled on a request for a preliminary ruling concerning the interpretation of Article 3(1)(e)(ii) and (iii) of Directive 2008/95/EC. The request was made during a dispute which began in 2015 between a company and the Hungarian Intellectual Property Office (HIPO), for the latter’s refusal to register a three-dimensional sign as a trademark. In particular, the HIPO had found that the product in question was composed of elements specifically designed to perform a technical function, namely, to allow the object to remain balanced always. It had also found that the actual shape of the product, with its incisive and attractive style, determined its value. Consequently, the application for registration was rejected. After being referred to the Hungarian Supreme Court, the dispute was brought before the European Court of Justice (ECJ), to which three main questions were addressed.

The referring court sought clarification regarding Article 3(1)(e)(ii), according to which signs consisting exclusively of the shape of the product to obtain a technical result could not be registered, or, if registered, were to be declared invalid. In particular, the ECJ was asked whether said article should be interpreted as meaning that, to determine whether a sign consists exclusively of the shape of the product to achieve a technical result, it must be limited to the graphic representation of the sign or, if it is possible to also take into account the perception of the relevant public. The ECJ first ruled that this provision applies where the “essential characteristics” of the shape perform a technical function, not taking into account minor elements; it then stated that, when identifying those characteristics and determining whether they perform that technical function, they can certainly be regarded as elements of additional information to the mere graphic representation. However, they must be objective and reliable elements, which leads to the exclusion of the relevance of the perception of the relevant public.

Registration of a 3D trademark consisting exclusively in the shape of a product

European Court of Justice, Case no. C237/19 of 23 April 2020

date: 02.05.2020
Area: Intellectual Property

The European Court of Justice has ruled on a request for a preliminary ruling concerning the interpretation of Article 3(1)(e)(ii) and (iii) of Directive 2008/95/EC. The request was made during a dispute which began in 2015 between a company and the Hungarian Intellectual Property Office (HIPO), for the latter’s refusal to register a three-dimensional sign as a trademark. In particular, the HIPO had found that the product in question was composed of elements specifically designed to perform a technical function, namely, to allow the object to remain balanced always. It had also found that the actual shape of the product, with its incisive and attractive style, determined its value. Consequently, the application for registration was rejected. After being referred to the Hungarian Supreme Court, the dispute was brought before the European Court of Justice (ECJ), to which three main questions were addressed.

The referring court sought clarification regarding Article 3(1)(e)(ii), according to which signs consisting exclusively of the shape of the product to obtain a technical result could not be registered, or, if registered, were to be declared invalid. In particular, the ECJ was asked whether said article should be interpreted as meaning that, to determine whether a sign consists exclusively of the shape of the product to achieve a technical result, it must be limited to the graphic representation of the sign or, if it is possible to also take into account the perception of the relevant public. The ECJ first ruled that this provision applies where the “essential characteristics” of the shape perform a technical function, not taking into account minor elements; it then stated that, when identifying those characteristics and determining whether they perform that technical function, they can certainly be regarded as elements of additional information to the mere graphic representation. However, they must be objective and reliable elements, which leads to the exclusion of the relevance of the perception of the relevant public.