I have written several articles about the difficulties businesses face in trying to secure, by way of a UK or EU registered trade mark, protection against a competitor copying the 'shape' of their goods.
Those articles concentrated on the difficulty of establishing that the shape in question is ‘inherently distinctive’ (and thus registerable), in particular because often the shape does not depart significantly from the norm or customs of the sector and, even where it does, it fails to act as a ‘badge of origin’, telling consumers who made or supplied the goods in question. Rather than the shape of the goods, they are much more likely to look for a word or logo mark, which has been applied to the goods, or under which they are marketed to the public.
A recent decision of the Court of Justice of the European Union (“CJEU”), in the case of Gömböc Kutató, Szolgáltató és Kereskedelmi Kft. v Szellemi Tulajdon Nemzeti Hivatala (Case C-237/19), has highlighted two other issues that often prevent the registration of shapes of goods as trade marks.
EU and UK trade mark law states that you cannot register as a trade mark a sign which consists exclusively of, inter alia, (a) the shape of goods which is necessary to obtain a technical result; or (b) a shape which gives substantial value to the goods’
But what do these provisions mean?
In the Gömböc case, the CJEU confirmed that (a) is intended to prevent businesses registering, as trade marks, shapes that incorporate technical solutions, or functional characteristics, so as to form an obstacle preventing competitors from freely offering for sale products incorporating them. Trade mark law will not allow businesses to perpetuate, indefinitely, exclusive rights to technical solutions.
The CJEU also confirmed that assessing whether the shape of goods is necessary to obtain a technical result involves two stages.
First, what are the ‘essential characteristics’ of the shape?
The CJEU has previously held that registration of a sign consisting exclusively of a shape must be refused when the essential characteristics of that shape perform a technical function.
When assessing what are the essential characteristics, the CJEU held that one is not limited to looking only at the graphical representation of the shape for which registration is sought, in order to identify the essential characteristics. One can also consider other objective and reliable sources, such as surveys, expert opinions and data relating to intellectual property rights conferred previously in respect of the goods concerned. The views of the general public are also a relevant, but not decisive, factor.
Second, do the essential characteristics perform a ‘technical function’ (i.e. are the essential characteristics dictated by the technical solution to which the shape gives effect)?
The CJEU held that the determination of the technical functions of the product in question must be based on objective and reliable information (e.g. any description of the product submitted at the time of the filing of the application for registration of the mark; data relating to other intellectual property rights conferred previously in respect of the product, such as patents or registered designs; surveys or expert opinions on the functions of the product; and other relevant documentation, such as scientific publications, catalogues and websites, which describe the technical features of the product). However, the views of the general public as to the technical functions of the product in question and the way in which they are achieved are not a relevant factor to take into consideration.
With regard to (b), the CJEU confirmed that this ground for refusal is based on an objective analysis, intended to demonstrate that the shape in question, on account of its characteristics, has such a great influence on the attractiveness of the product that restricting the benefit of the shape to a single undertaking would distort the conditions of competition on the market concerned.
In order for the ground for refusal to apply, it must be apparent from objective and reliable evidence that a consumer’s decision to purchase the goods in question is, to a very large extent, determined by one or more features of the shape. Characteristics of the product not connected to its shape, such as its technical qualities, or the reputation of the product, are irrelevant, as are the story of its creation, its method of production, the materials used and the identity of the designer.
However, the concept of a shape ‘which gives substantial value to the goods’ is not limited to where the shape of the goods has an exclusively artistic or ornamental value. In other words, one is not engaged in assessing the aesthetic or artistic merits of the shape – merely, whether the consumer’s decision to purchase the product in question is to a large extent determined by the shape for which registration is sought as a trade mark.
The CJEU also confirmed that EU and UK law allows for the co-existence of several forms of legal protection for the design and appearance of goods. The fact that the appearance of a product is protected as a registered design does not, of itself, prevent it also being registered as a trade mark, provided the conditions for registration are met. However, as this case and previous cases have shown, those conditions are not easy to meet.