The case: In addition to design protection, the Hungarian company Gömböc Kft also sought trade mark protection for an unusual, innovative product: the Gömböc. Its shape was a result of work and calculations carried out by the equilibrium researcher and mathematics professor Gábor Domokos from Budapest. No matter how the Gömböc is aligned or placed, it always rights itself. The product is advertised with an emphasis on its perfect beauty and its calming and inspiring effect:

 Gömböc Kft applied for trade mark protection for the Gömböc in the categories of both ‘toys’ and ‘decorative objects’. In order to represent the shape of the Gömböc product, it submitted the following illustration to the Hungarian Trade Mark Office:

The office, however, objected.

The mark could not be registered in the category of ‘toys’. All the features of the shape of the Gömböc covered by the trade mark were necessary to fulfil the technical effect of constantly righting itself. Where a product has exclusively technical features, trade mark protection cannot be granted for the shape of such a product for an unlimited period of time.

Following a referral by way of appeal, the European Court of Justice did not object to this argument in principle. It is true that the image of the shape in the trade mark application does not show the technical effect of the uprighting features. However, it was sufficient that the technical effect of the shape could be objectively established by other means. Even the fact that the image of the shape only reproduces a part of the whole shape of the product is irrelevant if – as here – the depicted part of the shape is necessary for its technical effect.

Progressing to a second, quite different consideration, the Hungarian Patent Office also rejected the registration of the trade mark in the category of ‘decorative objects’. This was because signs consisting of a shape that essentially gives the product its value cannot be registered, and in the case of the Gömböc, consumers would be purchasing it mainly because of its attractive design.

Thus, the Hungarian Trademark Office invoked another obstacle to the protection of certain shape marks. If the shape of a product, by virtue of its inherent characteristics, exerts such an influence on the attractiveness of the product that the conditions for competition would be distorted, it must not be possible for a single company to reserve protection ad infinitum.

The European Court of Justice did not object to the second consideration of the Hungarian Trade Mark Office either. It even added that the essential value of the shape of the product could also result from aspects other than the particular aesthetics of the shape. In the present case, the essential value of the shape of the Gömböc could also result from the fact that the Gömböc has become the ‘haptic symbol of a mathematical discovery’.

In this specific case, the Court of Justice has thus set very high hurdles for trade mark protection of the Gömböc. However, the final decision on the trade mark application of the Gömböc in Hungary is still pending.

 Court of Justice of the European Union, 23 April 2020, C-237/19.

Learnings: If you want to obtain trade mark protection for the shape of a product, make also sure that not all of the essential features of the shape applied for create a technical effect and that the shape does not in itself constitute the essential value of the product. It is possible that only the time-limited direct options of patent protection, utility model protection and design protection will be available for such products.

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