18 September 2014Trademarks

CJEU: trademarks based on ‘functionality’ may be denied

Europe’s highest court has ruled that trademarking shapes that are essential to making a product functional may be prevented under EU law.

The Court of Justice of the European Union (CJEU) was ruling on a case surrounding the Tripp Trapp children’s chair and whether its shape, and “value” of the shape, could be protected.

First released in the 1970s the Tripp Trapp has sloping uprights, to which all elements of the chair are attached, and has removable plates to adjust its height. It was first sold by Dutch company Stokke Nederland BV, which acquired a trademark in 1998.

The current dispute started after German Company, Hauck GmbH & Co.KG, which makes children’s products, launched two chairs called Alpha and Beta.

Stokke brought a lawsuit against Hauck claiming that the chairs infringed its trademark, but Hauck filed a counterclaim to invalidate the trademark.

On appeal, the Hoge Raad der Nederlanden (Supreme Court of the Netherlands) referred questions to the CJEU for a preliminary ruling on the laws on trademark registration and the grounds for refusal surrounding the shape of a product.

In its judgment, released this morning (September 18), the CJEU ruled that “shapes with essential characteristics which are inherent to the generic function or functions” of such goods must be denied registration.

“Reserving such characteristics to a single economic operator would make it difficult for competing undertakings to give their goods a shape which would be suited to the use for which those goods are intended,” the court wrote.

It added: “As regards the ground of refusal or invalidity on the basis of a ‘shape which gives substantial value to the goods’ the court observes that this concept cannot be limited purely to the shape of products having only artistic or ornamental value.

“The fact that the shape of a product is regarded as giving substantial value to that product does not mean that other characteristics may not also give the product significant value.”

The CJEU allows courts of member states to refer questions about the interpretation of EU law.

A final ruling on the case will still need to be decided by the courts in the Netherlands.

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