Protection for three-dimensional trademarks

This article excludes protection when “the sign to be filed as a trademark consists exclusively of the shape … which gives substantial value to the goods”.

The dispute was between German company Hauck and Norwegian company Stokke over a children’s chair, marketed by Stokke, and called the Tripp Trapp chair.

On May 8, 1998, Stokke filed a Benelux three-dimensional trademark for the shape  of the Tripp Trapp chair, designating “chairs, especially high chairs for children”.

Stokke, claiming that Hauck was infringing its rights by making two chairs called Alpha and Beta, brought an action before the District Court of The Hague, claiming copyright and trademark infringement. Hauck counter-attacked with an action to invalidate the trademark, which was rejected.

On appeal the court held that the attractive appearance of the Tripp Trapp chair gave the product substantial value and that its shape was determined by the nature of the product. Consequently, the trademark was cancelled.

Both parties brought an appeal before the Supreme Court of the Netherlands. The referring court said that an interpretation of article 3(1)(e) of the EU Trademarks Directive by the CJEU was needed.

Therefore several questions were raised in relation to what “the shape that results from the nature of the goods themselves” means. Does it mean that the shape is indispensable to the function of the goods? How should the provision be interpreted?

“Shape that is indispensable to the function of the product”

The CJEU first stated, with reference to the Lego Juris v OHIM case of September 14, 2010, that the purpose of prohibiting the registration of such a sign was to avoid trademark protection, without time limitation, after other rights had ended. Then the court considered that in order to apply the relevant part of article 3(1)(e) of the EU Trademarks Directive correctly, the essential characteristics of the sign need to be identified on a case-by-case basis. It should take into account either the overall impression produced by the sign or an examination of each of the components of that sign in turn.

This ground for refusal cannot apply when the trademark relates to a shape in which decorative or imaginative elements independent of the function of the goods play an important role. Instead, when shapes have essential characteristics inherent to the generic function or the functions of such goods, these shapes must be denied registration.

Reserving such characteristics to a single economic operator through a trademark registration would indeed impede competitors from giving their goods a shape that consumers will be looking for because of its function, and which is suitable to the use for which those goods was intended.

The “shape that gives substantial value to the goods”

Turning now to what the “shape that gives substantial value” means, the court considered that this can apply to products having several characteristics, each of them giving substantial value.

So this concept of “substantial value” cannot be limited purely to the shape of products having only artistic or ornamental value.

In the present case, the shape of the Tripp Trapp chair not only gave an aesthetic value to the chair, but had also other significantly valuable characteristics such as safety, comfort and reliability.

Moreover, the perception of the product’s shape by the public is only one of the criteria to be used in determining the essential characteristics of the product.

Other criteria may apply, such as the nature of the category of products, the artistic value of the shape, the existence of and lack of similarity with other shapes, price difference, or promotional strategy focusing on the aesthetic aspect of the product.

The independence of the grounds for refusal of registration

There was a further question on the grounds for refusing a registration set out in the relevant parts of article 3(1)(e) of the Directive. The court confirmed that the three grounds provided in this article—shape resulting in the nature of the goods, technical result, and shape giving substantial value—operate independently.

As a result of the Stokke decision, the grounds for refusing three-dimensional trademarks are interpretated even more broadly than they were before and the registration and protection of three-dimensional trademarks become almost impossible to implement today through the Community trademark system.

Aurélia Marie is a partner at Cabinet Beau de Lomenie. She can be contacted at: amarie@bdl-ip.com