The limits of shape protection: The Gömböc example
It is very challenging to obtain a legal monopoly in a shape. The easiest solution is to file one or more registered designs within the one year grace period applicable for UK and EU registered designs. Miss the deadline, unregistered designs, copyright or even trade marks may be available. The criteria for protection vary and, particularly in the case of trade marks, there are a lot of exceptions.
The Gömböc is a mathematical theory made real. It is a convex, three-dimensional shape specifically designed to have just one stable and one unstable equilibrium point. It was created by two Hungarian inventors following a proposal by a Russian mathematician, Vladimir Arnold, that such a shape was theoretically possible.
The attempts at protecting this shape have been the subject of a European Court of Justice (CJEU_ decision (Gömböc Kutató, Szolgáltato és Kerreskedelmi Kft v Szellemi Tulajdon Nemzeti Hivatala, Case C‑237/19). This decision takes a close look at the exclusions to registrability for shape trade marks and whilst the particular facts are fairly niche, the wider principles are important for all rights holders.
The Gömböc was also registered as a design. This led to an important question for the court: is a shape that corresponds to a registered design automatically excluded from registration as a trade mark by reason of Article 4(1)(e)(iii) of the Trade Marks Directive? In other words on the basis that the shape, or another characteristic gives substantial value to the goods.
Importantly, the CJEU confirmed that there was not an automatic exclusion to trade mark protection for a shape that was also protected by a design. In other words, the co-existence of several forms of IP protection is allowed. An important consideration was the fact that designs and trade marks have different criteria for protection. Therefore, the fact that there was already a registration under the design regime, did not mean that it was not possible to get a registered trade mark.
The court also confirmed that the question of "substantial value" should be considered in the round. Relevant factors include whether the consumer’s decision to purchase a product was based to a very large extent on one or more characteristics of its shape or whether the substantial value of the shape also resided in other factors such as the story of its creation, its method of production, the materials it contained or the identity of its designer.
The protection of shapes remain complicated but this case offers an important clarification of one of the major issues.