The Hungarian Gömböc – a mathematical and legal wonder before the CJEU

A so-called 'Gömböc' is a strange thing. Although it might look like an egg with sharp edges, when you put it down it starts rolling around with an apparent will of its own until it reaches its equilibrium position. This self-righting function originates from its unique shape.

Up until a short time ago, no one was sure this mathematical object even existed. This sophisticated item is the first known homogeneous object with exactly one stable and exactly one unstable equilibrium point.

Even though the conjecture about its theoretical possibility is associated with a Russian mathematician, Vladimir Arnold, the mathematical proof that there is indeed a 3D body which is homogeneous, convex and self-righting at the same time was provided in 2006 by two Hungarian scientists – Gábor Domokos and Péter Várkonyi. Hence, its Hungarian name, which originally means "headcheese".

Recently, this mathematical problem entered the legal arena when the Supreme Court of Hungary decided to refer questions to the (CJEU) a preliminary ruling regarding a trade mark application for the Gömböc.

Gömböc Kft. applied for a Hungarian national trade mark for products in three different classes (class 14 'decorative objects', class 21 'decorative objects made of glass ceramics' and class 28 'toys') that all exploit the self-righting capability of the figure. The shape of Gömböc – due to its individual character – was already protected by a registered design right at the time of the application.

The Hungarian Intellectual Property Office (HIPO) rejected the application.

Classes 14 and 21

• HIPO stated that pursuant to the relevant Hungarian legislation corresponding to Article 3 Section 1 point e) of the Trade Mark Directive 2008/95/EC, signs that consist exclusively of the shape or another characteristic which gives substantial value to the goods shall not be registered as a trade mark.
  
• HIPO held that Gömböc embodies an eye-catching, outstanding design, which is the main ground for its commercial value. While it cannot be said that 3D ornaments are excluded from trade mark registration altogether, when the sign is exclusively determined by the outstanding design of the ornament, it stands to reason that the shape gives substantial value to the object.

Class 28

• HIPO asserted that the shape of Gömböc is necessary to achieve the technical (ie self-righting) function. Pursuant to Article 3 Section 1 point e) of the Trade Mark Directive, signs that consist exclusively of the shape of goods which is necessary to obtain a technical result may not be registered as a trade mark.
• From HIPO's point of view, it is precisely due to the shape of the object that it can function as a toy designed always to return to its stable equilibrium point. Every element of the sign serves this technical function and consumers view the sign not as an indication of the commercial origin of the goods but as a shape essential for the purposes of the desired technical effect of the product. Therefore, if the trade mark protection for this 3D mark were granted, the possible choices of competitors between various technical solutions would be strongly limited and it would lead to an unnecessarily wide-ranging monopoly.

The applicant appealed to the Metropolitan Court. It argued that HIPO erred in taking certain characteristics of Gömböc into consideration that are not even visible on the graphical representation in the application. According to the applicant, when applying the grounds for refusal of registration, only the objective characteristics of the sign are relevant – not consumers' perception and background knowledge.

Although the Metropolitan Court agreed with HIPO on the refusal, it relied on partially different reasons to support it. On the one hand, the Court agreed with the applicant that the relationship between the shape and the technical function had to be assessed objectively without considering the consumers' judgment.

However, the Court found that, even under an objective test, the link between the shape and the function could be established. In a similar vein, the Court did not agree with HIPO that the shape's aesthetic characteristics gave substantial value to the goods – but nonetheless also upheld this ground for refusal, arguing that the substantial value derived from the shape's objective mathematical significance.

The applicant appealed to the Court of Appeal, which agreed with the Metropolitan Court in analysing the characteristics of the sign from an objective point of view. Contrary to the lower court, however, it emphasized that since the sign only shows the shape from one perspective, the latter's material characteristics or self-righting function should not be regarded as part of the sign.

According to the Court of Appeal, neither the graphical representation nor the list of goods (toys) give any indication as to how the Gömböc can be played with as a toy. Therefore, the Court of Appeal dismissed the refusal based on technical function.

The Court of Appeal nevertheless held that the registration of the mark should be refused in all classes on the basis of giving substantial value to the product. In this regard, the Court referred to HIPO's view and found that being a unique shape gives the 3D sign substantial value, and consequently it should not be registered as a trade mark.

As an additional ground for refusal, it also pointed out for the first time in the case that the time-limited exclusivity acquired by the registered design right should not be extended by trade mark protection which is meant to serve a different purpose.

The applicant turned to the Supreme Court requesting the revision of the decision. Contrary to the lower courts, the Supreme Court did not find the relevant EU case law sufficiently clear and decided to refer the following three questions to the CJEU for a preliminary ruling.

In case of a 3D sign:

As far as the shape may be necessary to obtain a technical result, can it be taken into account that consumers are aware that the shape is necessary to obtain the technical result?

• The question is essentially whether it is possible to examine information other than those represented in the sign, such as the knowledge of the relevant public.
• The Supreme Court deemed that there was no clear answer in the CJEU's case law in this regard, since in one instance (C-205/13., Hauck GmbH & Co. KG v. Stokke A/S) it held that when applying this ground for refusal, the perception of the relevant consumers need not necessarily be taken into account, whereas in another case (C-30/15. P., Simba Toys GmbH & Co. KG. v EUIPO et al) it concluded that, when the shape could not be analysed on the basis of the graphical representation alone, it was justified to take supplementary information into consideration.
• While HIPO deemed it was permitted to consider the public's perception, both the Metropolitan Court and the Court of Appeal held that the question should be examined objectively, although they came to different conclusions as to whether the graphical representation had a sufficiently close connection to the technical function in the case at hand.

As far as the shape may give substantial value to the goods, can the perception or knowledge of the buyer be taken into account?

• In a similar way to the first question, the Supreme Court looked at whether the consumers' knowledge – this time about the scientific significance of the shape depicted in the mark – can be taken into account when assessing if it gave substantial value to the product.
• In this regard, the Metropolitan Court felt the need to examine what consumers knew and thought about the Gömböc, arguing that it was the mathematical significance of the shape that gave substantial value to the product, whereas HIPO and the Court of Appeal excluded the public's perception when coming to a decision, emphasizing the shape's aesthetic characteristics instead.

As far as the shape may give substantial value to the goods, is this ground for refusal applicable to a shape protected by a registered design right whose aesthetic appearance alone gives the goods any kind of value?

• According to CJEU case law, trade mark protection should not be used as a tool to circumvent the time limitation of a registered design or patent (C-205/13., Hauck GmbH & Co. KG v. Stokke A/S). Does this mean that 3D shapes that are already protected by registered design are excluded from trade mark protection altogether?
• Furthermore, as the only purpose of decorative items is decoration, it is solely their appearance that gives them any kind of value. Does this mean that, in the class of decorative items, the shape of the item alone can never be registered as a trade mark because it would necessarily consist solely of a characteristic that gives the item substantial value?

Vladimir Arnold's conjecture about the existence of a shape like Gömböc turned out to be valid after all. The above case begs the question: is the applicant's conjecture that a shape like Gömböc can be protected as a trade mark valid as well? We have yet to see!

Zoltán S. Novák
Kinga Harza