3D trade marks return to equilibrium? The end of the Gömböc saga

Former Guest Kat Peter Ling has not forgotten the ole' Kat. This time, he reports on the end of the Gömböc-trade mark registration dispute, as the Supreme Court of Hungary has now spoken.

In 2020, upon referral by the Supreme Court of Hungary (Kúria), the CJEU issued a leading case on the interpretation of Art. 3(1)(e) of the Trade Mark Directive related to a 3D shape (Gömböc, C-237/19, Kat post, here). The Kúria issued its decision following the CJEU ruling in late 2021 (not yet published online at the time of writing) and put an end to the case, ruling that the shape of the Gömböc cannot be protected under EU trade mark law.

Before delving into the reasoning of the Court, a refresher in Euclidean solid geometry will be helpful. Until recently, it was believed that a three-dimensional body having only two equilibrium points (one stable and one unstable) did not exist. This conjecture was tested by two Hungarian engineers who not only proved it wrong, but actually built the three-dimensional body representing such a shape, naming it the Gömböc (read more about the etymology of this word in the Kat post on the CJEU decision).

                                                                                   Gömböc with wild Kat

"Gömböc" is now a mathematical term designating a convex three-dimensional homogeneous body that is "mono-monostatic". In lay terms, it is a body that does not curve inward (hence "convex"), is made of a single substance (hence "homogeneous"), and has one single stable, and one single unstable, point of equilibrium (hence "mono-monostatic"). As a result of these properties, if a Gömböc is put on a flat surface in any position, it always rights itself into the stable equilibrium position, like a roly-poly toy. However, unlike a roly-poly toy, the Gömböc does not use a built-in weight in its bottom half to right itself: its unique shape does the job alone.

The creators of the Gömböc applied for a 3D trade mark representing the shape, which eventually led to the above-mentioned CJEU decision. In brief, the CJEU ruled that: (i) extrinsic evidence (i.e., other than the graphical representation in the register) can be taken into consideration when deciding whether a shape is necessary to obtain a technical result; (ii) the perception of the relevant public can be taken into account to identify the essential characteristics of the sign at issue; and (iii) only information derived from objective and reliable sources can be taken into consideration in deciding whether the shape is technically necessary.

The relevant provision of the Trade Mark Directive (Art. 3(1)(e)) provides that signs consisting exclusively of the shape, or another characteristic--

(i) which results from the nature of the goods,

(ii) which is necessary to obtain a technical result, or

(iii) which gives substantial value to the goods

are excluded from registration as an EU trade mark. In the present case, the application of para. (ii) and (iii) eventually led to the finding that the shape was excluded from registration.

                                                The shape as represented in the trade mark application

First, the Hungarian Supreme Court dealt with the application to register the Gömböc shape for "toys" in class 28. The Court first found that the main features of the Gömböc shape are its ability to self-right and homogeneity. Neither of these features can be inferred from the graphical representation of the shape in the Trade Mark Register. However, the Court found that the connection between the shape, on the one hand, and the technical features, on the other, are of public knowledge, based on objective and reliable sources (in particular, newspaper articles and online sources controlled by the applicant).

As a result, the Court found that the shape to be registered consists exclusively of a shape that is necessary to obtain the technical result of being able to self-right. In conclusion, the Court considered that the shape of a Gömböc is excluded from registration for "toys" in class 28, based on Art. 3(1)(e)(ii) of the Trade Mark Directive, and the Hungarian statutory provisions implementing this article.

The applicant also sought registration of the Gömböc shape for "decorative items" in class 14 and "decorative crystalware and chinaware" in class 21. The Court addressed the two product classes together.

The Court first observed that the relevant public considers the Gömböc shape to be the tangible symbol of a mathematical discovery. Hence, the relevant public wishes to purchase a Gömböc because of what it represents in terms of the history of science. The main objective of trade marks is to distinguish between products or services of competitors. The substantial value of the shape of a Gömböc stems, as the Court put it, "from an intellectual creation" and not from the intent to distinguish certain goods from goods of a competitor.

Trade mark law is not the correct intellectual property right to protect such shapes. Accordingly, the Court ruled that the shape of a Gömböc is excluded from registration for decorative items in classes 14 and 21, based on Art. 3(1)(e)(iii) of the Trade Mark Directive (and the Hungarian statutory provisions implementing it).

Picture on top center is by the author.

Picture on bottom center is from the decision of the Supreme Court of Hungary.