Request for a preliminary ruling concerning the three-dimensional trade mark

Case C-237/19. Request for a preliminary ruling from the Kúria (Hungary)

minbuza.nl (unofficial translation from Dutch): "Gömböc has applied for registration of three-dimensional sign as a trade mark for decorative objects (umbrella and decorative objects made of glass and ceramics) and toys in Hungary at the Office for IP. The Office rejected this application on the basis of a ground for refusal in the Hungarian Trademark Law. Registration as a toy has been refused because the sign is a form that is considered necessary for the technical outcome of Gömböc, which would limit the freedom of choice of competitors. Regarding the trade mark as a decorative item, the Office states that decorative items are excluded from trademark registration if they consist solely of the shape, and the Gömböc derives its striking appearance from the design.

[...]

Consideration:

The referring court asks whether, if the sign consists exclusively of the shape of the product, it must be determined by looking at the graphic representation or can it also be taken into account that the shape is needed (together with other properties) and is known by the target audience. The second question refers to the ground for refusal applicable to decorative items, and whether it is important in their application that the sign consists solely of the shape of the product. With the third question, under a, the court requests an understanding of the relationship between design protection that has already been obtained and the refusal to grant a design trade mark, since the acquisition of a design right leads to recognition of the aesthetic nature of the product gives substantial value to it and whether it precludes registration as a three-dimensional trade mark in advance. Most recently, the referring court seeks clarity on the relationship between the registration of three-dimensional objects as a three-dimensional trade mark and the ground for refusal.

Questions referred

1) Is Article 3(1)(e)(ii) of Directive 2008/95/EC 1 of 22 October 2008 to approximate the laws of the Member States relating to trade marks to be interpreted as meaning that, for signs which consist exclusively of the shape of goods,

(a)    it can only be examined if the shape is necessary to obtain the technical result sought on the basis of the graphic representation contained in the register, or

(b)    can the perception of the relevant public also be taken into account? In other words, can it be taken into account that the relevant public is aware that the shape for which registration is sought is necessary in order to obtain the technical result sought?

2) Is Article 3(1)(e)(iii) of Directive 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trade marks to be interpreted as meaning that the ground for refusal is applicable to those signs which consist exclusively of the shape of goods and in respect of which it can be determined whether the shape gives substantial value to the goods, bearing in mind the perception or knowledge that the buyer has of the goods represented graphically?

3) Is Article 3(1)(e)(iii) of Directive 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trade marks to be interpreted as meaning that the ground for refusal is applicable to signs which consist exclusively of a shape

(a)    that, by virtue of its individual character, already enjoys the protection conferred on designs, or

(b)    whose aesthetic appearance alone gives the goods any kind of value?

To the notice on minbuza.nl (in Dutch)