Introduction

A few days ago, the Court of Justice of the European Union (CJEU) issued its judgment in the important Gömböc referral (C-237/19) [see here for a discussion of the background].
The decision, which is analyzed in detail on The IPKat here and has been also discussed in the context of the Journal of Intellectual Property Law & Practice’s first EU trade mark live webinar[from 1:06:00; for the dates of the next webinars, see here], is equally relevant to trade mark law (it was indeed a trade mark case concerning protection of 3D marks) and other IP rights (IPRs), including copyright.

Assessment of functionality

As far as trade marks are concerned, the most valuable aspect of the judgment is perhaps the one concerning how the assessment of ‘technical’ and ‘aesthetic functionality’ is to be conducted under what is currently Article 7(1)(e) EUTMR/4(1)(e) EUTMD.
Indeed, as discussed at greater length here, pre-Gömböc case law did not exhaustively clarify to what extent a combination of different objective elements (starting from the graphic representation and the accompanying description) and subjective elements (including the consumers’ perception and the reputation enjoyed by the product), should be considered and what the hierarchy (if any) between them is or should be.
With particular regard to the latter, the question of how both the role/perception of the average consumer and the relevance of reputation are to be assessed has remained uncertain for a long time, with some relevant insights being provided recently more by Advocates General (notably in the Opinions in Hauck and the two Louboutin Opinions) than the CJEU.

In Gömböc, the CJEU answered that the relevant public’s own perception of the sign matters, though it may matter differently when appreciating technical functionality vis-à-vis aesthetic functionality, and also clarified – substantially in line with, e.g., the First Opinion of Advocate General (AG) Szpunar in Louboutin – that account must not be taken of the attractiveness of the goods as flowing from the reputation of the mark or its proprietor.

Rights cumulation

Another key aspect, the relevance of which extends well beyond the realm of trade marks, concerns pre-existing IPRs (in that case, design protection) and their role to determine protection under other IPRs.It is sufficient to think, in fact, that currently there is a copyright case pending before the CJEU, Brompton Bicycle (C-833/18), asking indeed about copyright protection of technical shapes [see herehere and here, and here]. In the background national proceedings, the shape at issue is that of Brompton Bicycle’s folding bike.
In Gömböc, the referring court had asked inter alia whether the substantial value ground “must be applied systematically … where the appearance of that product enjoys protection under the law relating to designs”.

The answer, in principle, is in the negative: nothing prevents IPR cumulation. Although the objective of the absolute grounds in Article 7(1)(e) EUTMR/4(1)(e) EUTMD is “to prevent the exclusive and permanent right that a trade mark confers from serving to extend indefinitely the life of other rights in respect of which the EU legislature has sought to impose time limits …, such an objective does not mean that EU intellectual property law prevents the coexistence of several forms of legal protection.” (at [50])
Each IPR has its own subsistence requirements and the analysis required to determine whether, e.g., a design possesses individual character is different from that that serves to establish whether the sign at issue consists exclusively of a shape or another characteristic which gives substantial value to the goods.
It thus follows 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 product where that sign enjoys protection under the law relating to designs or where the sign consists exclusively of the shape of a decorative item. (emphasis added; at [62])

Relevance of the CJEU’s position beyond the realm of trade marks

Even if historically the cumulative protection of the same object under different IPRs was disallowed in certain jurisdictions on consideration of the demarcation between the subject matter protected by patent, copyright and trade mark law (see, e.g., the discussion here), shapes (or other characteristics) are currently not precluded from being simultaneously protected by different rights and no impediments subsist for a shape protected by a certain IPR (whether expired or not) to be also protected by means of another IPR.
Overlaps in IP protection are also the result of the progressive expansion of the scope of the various rights beyond their original remit and are not necessarily problematic per se, considering the multifaceted nature of many objects or invention or creation, the different rationale underlying the various rights, as well as the different protection available under each of them. 
In light of the foregoing, the CJEU conclusion in Gömböc appears neither surprising nor inappropriate.
In Hauck the CJEU had also suggested that prior IP protection is one of the factors that might weigh in favour of a finding that the shape or characteristic at issue confers a substantial value to the goods [for a practical application, see the English London Taxi case, discussed here].
What is however significant about this latest judgment is the emphasis placed on the fact that the assessment to be conducted requires consideration of, first, the different requirements that need to be fulfilled to receive protection under different IPRs and, second, the fact that an object protected by an earlier right is not “systematically” disqualified from protection under another right.

In the pending Brompton Bicycle referral, one of the issues for the CJEU to address is the relevance of the existence of an earlier IPR (an expired patent) to the determination of copyright subsistence in the object covered by it. In his Opinion, AG Campos reviewed CJEU trade mark case law and considered that – to establish copyright protection – it might be necessary to take into account, inter alia, the prior existence of a patent or design right and, closely linked to that, the intention of the author/inventor/designer.
Also in light of what the CJEU established in Gömböc, whilst prior IP protection is not irrelevant, it should not lead to the systematic conclusion that an object cannot be protected by other IP rights because of that. In addition, it would be also incorrect to suggest that everything that is described in, e.g., a patent application as contributing to the functionality of the object at issue automatically disqualifies a finding of originality in relation to such features. It would be inappropriate to merge and confuse the requirements for patent registration and those for copyright protection.
Another incorrect approach would be to consider relevant, as instead AG Campos did in his Opinion, the intention of the author/inventor designer. I have already criticized this part of the Opinion here. In this context, I would also add that, taking into account the intention of the author, e.g., the fact that they applied for a patent or a design right, could lead to the undue systematic exclusion of protection of the same object through a right other than the one originally applied for. After Gömböc, there is further
support as to why this approach should not be adopted.

Eleonara Rosati is an Italian-qualified lawyer (avvocato) with experience in copyright, trade marks, fashion and internet laws. She is a tenured Associate Professor in Intellectual Property (IP) Law at Stockholm University. She is also an Of Counsel at Bird & Bird and an editor of the Journal of Intellectual Property Law & Practice (Oxford University Press, peer reviewed) ] 

This article first appeared on IPKat on 2nd May, 2020.
The original article can be accessed here.

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