Tripped and Trapped? CJEU rules on shape trade marks

Tripped and Trapped? CJEU rules on shape trade marks
 What makes a shape distinctive? John Olson, partner and specialist in trade mark law at Edwards Wildman, explains the ruling in the recent Tripp Trapp highchair case (Hauck GmbH & Co KG v Stokke A/S C-205/13)  and considers the implications for brand owners looking to register three-dimensional trade marks based on product shapes.

What is the Tripp Trapp case about?

The case involved the famous Tripp Trapp highchair, designed by Peter Opsvik, which has been marketed by Stokke since 1972. In 1998 Stokke was granted a three-dimensional trade mark for a shape resembling the Tripp Trapp chair in the Benelux.

Stokke sought to enforce its trade mark rights in the Netherlands against a third party’s sale of chairs closely resembling the Tripp Trapp model. In response, the defendant, Hauck GmbH, counterclaimed for invalidity of Stokke’s trade mark on the basis that the attractive appearance of the Tripp Trapp chair gave that product substantial value and that its shape was determined by the nature of the product itself, namely a ‘safe, comfortable and reliable children’s chair’, contrary to the provisions of art 3(1)(e) of the Trade Marks Directive.

Seeking clarification on the breadth of the first and third limbs of art 3(1)(e) the referring Dutch court posed three questions to the CJEU.

How did the CJEU approach the referring court’s question concerning validity of a trade mark which consists exclusively of the shape which results from the nature of the goods themselves?

The court’s first question addressed the restriction in art 3(1)(e) which precludes the registration of shapes that result from the nature of the goods themselves. The court considered whether the provision should apply only in circumstances where the shape in question is ‘indispensable’ to the function of a product, or alternatively where one or more characteristics of a shape, which are nonetheless essential to the function of that product, may also be found in the products of competitors.

Following closely the policy decisions behind the provision, ie preventing the extension through the trade mark regime of otherwise finite IP rights such as designs, the court held that it could not be construed restrictively to forestall only the registration of ‘natural’ or ‘regulated’ products. Instead, the court concluded that the provision shou

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