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 should also apply to shapes containing essential characteristics, ‘which are inherent to the generic function or functions’ of such goods—ie characteristics which consumers would look for in the products of competitors.

What about the CJEU’s view on validity of a trade mark which gives substantial value to the goods?

In relation to the third proviso under art 3(1)(e), namely the exclusion against registration of shapes which add substantial value to products, the court held that the provision does not preclude other characteristics from also adding value. Accordingly, the court adjudged that the restriction could not have been intended to limit only the shape of products with artistic or ornamental value, as ‘there is otherwise a risk that products which have essential functional characteristics as well as a significant aesthetic element will not be covered’, effectively granting the trade mark proprietor a monopoly over those functional characteristics. With reference to the Tripp Trapp chair, while the court observed that the shape of the product undoubtedly leant it a significant aesthetic value, other characteristics (such as safety, comfort and reliability) also gave it essential functional value.

How relevant is public perception in this type of assessment of trade mark validity?

The court held that the perception of the relevant public was not decisive when determining registrability/validity under art 3(1)(e), although it could nonetheless be a relevant factor for a national court to apply along with:•

the nature of the category of goods concerned•
the artistic value of the shape in question
the extent to which it departs from the norms of the sector
a substantial price difference in relation to similar products, and
the existence of marketing strategies which focus on the promotion of aesthetic characteristics of the product

Accordingly, brand owners seeking to register trade marks based on the shape of their products cannot rely on the public perception of the shape, in contrast to the approach taken when considering distinctiveness.

In this ruling, has the CJEU broadened the application of the Trade Mark Directive, art 3(1)?

Although on first glance it may appear that the breadth of the restriction against shape marks has been expanded, in reality the CJEU has merely interpreted the provision in a practical manner, with policy considerations firmly in mind. For example, if the first limb of art 3(1)(e) only operated to exclude natural shapes, such as balls and fruit, or shapes regulated by law, many shapes covered by design registrations long-since expired may find protection through the trade mark regime.

What does this ruling mean for brand owners seeking to register trade marks based on the shape of their products?

The practical result is that even where a competing product could be made with alternative characteristics, if the features of a particular shape are essential to its overall functionality, art 3(1)(e) will apply. This interpretation is consistent with the approach already taken in relation to design law—the so-called ‘multiplicity of forms’ theory having been rejected by the UK and European courts. Nonetheless, the CJEU seemed eager to stress that the three grounds for refusal of registration set out in art 3(1)(e) ‘operate independently of one another,’ so challengers may not use these limbs in combination.

In recent years, the Office for Harmonization in the Internal Market’s (OHIM) stance towards the prospective registration of shape marks has been restrictive. Even before engaging art 3(1)(e), a shape must be adjudged sufficiently distinctive—ie it must serve to designate the goods of a particular undertaking. As a starting point, the OHIM appears now to take the approach that even well-known shape marks are inherently non-distinctive, obliging the proprietor to rely on the production of evidence of acquired distinctiveness. With this in mind, absent such evidence the provisions of art 3(1)(e) will not be considered at all, meaning that the impact of the CJEU’s decision is more likely to be felt in the context of invalidity proceedings against pre-existing registrations.

Interview originally published on WIPIT's sister site, LexisPSL IP&IT.

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