|A dangerous |
two-dimensional trade mark
Everyone knows the toy, although not everyone might be interested in its IP angle [how can they?, says Merpel].
Besides being an ideal talking point, technical products getting a trade mark application often hit a trade mark law's nerve, ie: what's the value of signs included in trade mark applications when assessing the absolute ground preventing technical features of devices and shapes from becoming trade marks?
In theory, owners' exclusive rights are limited to the aesthetic appearance of the sign as represented in the application graphic representation. Thus - according to some - the chance to register a certain sign should be based on the self-contained, easily accessible, and intelligible images that appear in trade mark application.
On a different note, most trade mark laws around the world prohibit the registration of technical solutions as trade marks. In this respect, not all signs are the same. In fact, certain [special] signs with a higher "degree of difficulty" raise peculiar concerns. Courts break the boundaries of trade mark applications and carry out a comprehensive technical examination of what and how the product corresponding to the sign at stake has been [and, most importantly could be] used for in the real world.
The duty to avoid trade mark monopolies on technical solutions obliges courts to reverse-engineer graphical signs and investigate the technical angle thereof, also on the basis of the applicant's previous commercial behaviour. This happened in the past with the Lego saga and, more recently, with the decision in Yoshida [see the Kat analysis here], where the Court of Justice of the European Union (CJEU) transformed a two-dimensional and apparently harmless device sign into a dangerous, sharp kitchen knife.
|The sign at stake |
in the CJEU decision
Accordingly, it concluded that:
In line with the Opinion of Advocate General Szpunar's [on which see here], the CJEU held that the absolute ground forbidding technical trade marks under the [then applicable] Regulation No 40/94 shall be taken very seriously, and that the GC's technical analysis of the sign failed to do so.
When it comes to signs which consist of the shape of actual goods - the CJEU held - "the essential characteristics of a shape must be assessed in the light of the technical function of the actual goods concerned".
The circumstance that the applicant requested registration of the contested sign for 'three-dimensional puzzles' in general, without restricting itself to those having a rotating capability, "cannot preclude account from being taken of the technical function of the actual goods represented by the sign at issue for the purpose of examining the functionality of the essential characteristics of that sign, as the proprietor of that mark would otherwise be allowed to broaden the scope of the protection arising from the registration thereof to cover every type of puzzle with a similar shape, namely any three-dimensional puzzle with cube-shaped elements, regardless of the principles by which it functions".
It is not clear what the concept of "abstract shape" shape means.
One could infer that it is just a notion describing every sign that does not represent the shape of actual goods. Even shapes of actual goods could have an "abstract" nature, though, as far as they allow non-technical uses. Vice-versa, "abstract" signs such as that of Yoshida could apparently become an "actual" good, if the Court so decides.
When should this "actual v abstract" test take place and on the basis of what criteria? The examination of the absolute ground under Article 7(1)(e(ii) remains pretty abstract, and actually far from settled.