A Lego toy or a real gun – that’s the question

We are all aware about toys in the form of guns used by kids for playing. However, it is rare a real gun in the form of toy to be found, a dangerous product which can cause a harm if used by children.

This is the case with the gun cover produced by the US company Culper Precision. They offer a gun cover (Block 19) in the form of a Lego toy, using the well-know design pattern typical for this type of toys. The gun under the cover is real.

Of course the Danish company sent a cease and desist letter insisting sales of such covers to be stopped immediately due to the potential misleading effect on children and possible dangerous incidents that can happen as a result.

Although Culper Precision didn’t infringe a registered trademark belonging to Lego, they used a style typical for Legos’ toys, which could mislead consumers about the product characteristics.

The US company agreed to stop producing this cover after selling 20 items of it. It will be interesting whether Lego will initiate a lawsuit for passing off for example.

Source: EAGLEGATE – Nicole Murdoch

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When 3D trademarks obtain a technical result – a decision by the EU Court

photo-1575505586569-646b2ca898fcThe European Court has ruled in the case C‑237/19 Gömböc Kutató, Szolgáltató és Kereskedelmi Kft. v Szellemi Tulajdon Nemzeti Hivatala.

This dispute concerns the following:

On 5 February 2015, Gömböc Kft. applied for registration of a three-dimensional sign as a trade mark in respect of goods consisting of ‘decorative items’ in Class 14  ‘decorative crystalware and chinaware’ and ‘toys’ in Classes 21 and 28 of that agreement, respectively. The sign was represented as follows:

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The Office rejected that application on the basis of the second and third indents of Article 2(2)(b) of the Law on Trade Marks. According to the Office, the sign for which registration is sought represents a homogenous object with two symmetry planes perpendicular to one another and consisting of seven smooth sides and edges separating those sides. That object is the product of Gömböc, the applicant in the main proceedings, namely a convex monostatic object made from homogeneous material, which has a single point of stable equilibrium and a single point of unstable equilibrium, that is to say, two points of equilibrium in total, the shape of which itself ensures that the object always returns to its position of balance. The Office found that the sign for which registration is sought represents a three-dimensional object which, due to its external design and the homogeneous material used, always returns to its position of balance, and that the shape of the object serves, overall, to achieve its technical objective of always righting itself.

When assessing the registrability of the sign at issue, the Office relied, in particular, on the knowledge of the characteristics and the function of the shape of that product that the average consumer was able to obtain from the applicant in the main proceedings’ website and from the considerable publicity the product had enjoyed in the press.

In the first place, the Office found, in essence, that, as regards the ‘toys’ in Class 28 of the Nice Agreement, the three-dimensional shape of the object allowed it to function as a toy whose principal feature is that it always returns to its point of stable equilibrium. Accordingly, all the elements of the sign at issue were designed in order to obtain that technical result, that is to say, they serve a technical function. The informed and reasonable consumer will therefore perceive the sign at issue as a shape necessary to obtain the technical result sought by the object that that sign represents.

In the second place, as regards the ‘decorative items’ in Classes 14 and 21 of the Nice Agreement, the Office stated that the three-dimensional shape represented in the sign at issue embodied a striking and attractive shape, which is an essential element in the marketing of the goods in question. Consumers buy decorative items mainly for their special shape. In principle, under trade mark law, three-dimensional decorative items cannot be denied protection, but where it is the striking style of such objects which determines their formal appearance, the value of the product resides in that shape.

Since the actions brought by Gömböc Kft. against the Office’s decision were dismissed at first and second instance, that company brought an appeal seeking a review of that decision before the referring court.

That court states, first, that, as regards the registration of the three-dimensional sign in relation to goods consisting of ‘toys’ in Class 28 of the Nice Agreement, the product the graphic representation of which is reproduced in paragraph 10 above is formed exclusively of the shape necessary to obtain the technical result sought. It notes that it is not possible to ascertain that result from that graphic representation alone, but that, as a result of the sign at issue, it is possible to recognise the product of the applicant in the main proceedings, Gömböc, and that, given the publicity which that product has enjoyed, the relevant public knows that the special shape and the homogenous structure of the product mean that it will always return to a position of balance.

Since the relevant case-law of the Court of Justice, in particular the judgments of 18 September 2014, Hauck (C‑205/13, EU:C:2014:2233) and of 10 November 2016, Simba Toys v EUIPO (C‑30/15 P, EU:C:2016:849), has failed to remove all doubt on the matter, the referring court is uncertain how it should assess, in connection with the application of the ground for refusing to register a sign as a trade mark or declaring a registered sign invalid provided for in Article 3(1)(e)(ii) of Directive 2008/95, whether that sign consists of the shape of the product which is necessary to obtain a technical result.

The referring court is uncertain, in particular, whether such an assessment must be based only on the graphic representation in the application for registration of the sign, or if the perception of the relevant public may also be taken into consideration in that regard in a situation where the product in question has become very well known and where, even though the product represented graphically consists exclusively of the shape necessary to obtain the technical result sought, that technical result cannot be ascertained from the graphic representation of the shape of the product in the application for registration alone, but requires knowledge of additional information on the product itself. That court notes, in addition, that the three-dimensional shape depicted in the sign at issue is shown from only one angle, with the result that that shape is not fully visible.

Second, in so far as concerns the ‘decorative items’ in Classes 14 and 21 of the Nice Agreement, the referring court is uncertain whether, in the case of a sign consisting exclusively of the shape of the goods, the ground for refusal or invalidity provided for in Article 3(1)(e)(iii) of Directive 2008/95 can be applied if it is only on the basis of the relevant public’s knowledge that it can be established that the shape gives the goods substantial value. In the present case, that knowledge relates to the fact that the product depicted in the sign at issue has become the tangible symbol of a mathematical discovery which addresses questions raised in the history of science.

Third, the referring court notes that the three-dimensional shape represented by the sign at issue already enjoys the protection conferred on designs. It observes that that type of protection may be afforded to products the appearance of which, in addition to meeting other requirements, has individual character. In the case of ‘decorative items’, the particular shape created by their designer, as an aesthetic feature, gives substantial value to the product.

Accordingly, the referring court is uncertain whether, in connection with the application of the ground for refusal or invalidity provided for in Article 3(1)(e)(iii) of Directive 2008/95, where the sole function of a product is to be decorative (decorative items), the shape of that product, which already enjoys the protection conferred on designs, is automatically excluded from the protection afforded by trade mark law. Moreover, the referring court seeks clarification as to whether that ground for refusal or invalidity can be applied to a product the three-dimensional shape of which fulfils purely a decorative function, only the aesthetic appearance of the product being relevant, with the result that, as regards decorative items, three-dimensional shapes for which protection is thus requested must necessarily be refused such protection.

In those circumstances, the Supreme Court, Hungary decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1) Must Article 3(1)[(e)(ii)] of [Directive 2008/95], in the case of a sign consisting exclusively of the shape of the product, be interpreted as meaning that

(a)   it is on the basis of the graphic representation contained in the register alone that it may be determined whether the shape is necessary to obtain the technical result sought, or

(b)  may the perception of the relevant public also be taken into account?

In other words, is it permissible to take into account the fact 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) Must Article 3(1)[(e)(iii)] of [Directive 2008/95] be interpreted as meaning that that ground for refusal is applicable to a sign that consists exclusively of the shape of the product where it is [only] by taking into account the perception or knowledge of the buyer as regards the product that is graphically represented that it is possible to establish that the shape gives substantial value to the product?

(3) Must Article 3(1)[(e)(iii)] of [Directive 2008/95] be interpreted as meaning that that ground for refusal is applicable to a sign, consisting exclusively of the shape of a product

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

(b)  the aesthetic appearance of which gives the product a certain value?’

The Court’s decision:

1. Article 3(1)(e)(ii) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that, in order to establish whether a sign consists exclusively of the shape of goods which is necessary to obtain a technical result, assessment does not have to be limited to the graphic representation of that sign. Information other than that relating to the graphic representation alone, such as the perception of the relevant public, may be used in order to identify the essential characteristics of the sign at issue. However, while information which is not apparent from the graphic representation of the sign may be taken into consideration in order to establish whether those characteristics perform a technical function of the goods in question, such information must originate from objective and reliable sources and may not include the perception of the relevant public.

2. Article 3(1)(e)(iii) of Directive 2008/95 must be interpreted as meaning that the perception or knowledge of the relevant public as regards the product represented graphically by a sign that consists exclusively of the shape of that product may be taken into consideration in order to identify an essential characteristic of that shape. The ground for refusal set out in that provision may be applied if it is apparent from objective and reliable evidence that the consumer’s decision to purchase the product in question is to a large extent determined by that characteristic.

3. Article 3(1)(e)(iii) of Directive 2008/95 must be interpreted as meaning that the ground for refusal of registration provided for in that provision must not be applied systematically to a sign which consists exclusively of the shape of the goods where that sign enjoys protection under the law relating to designs or where the sign consists exclusively of the shape of a decorative item.