Registered three-dimensional shape marks are attractive for brand owners. They provide exclusive rights in shapes which can last well beyond the life span of other forms of intellectual property. However, registration can also be very difficult to obtain – especially if the shape of the mark results from the nature of the product itself or gives substantial value to the product.
The registrability of these types of marks was recently considered by the Court of Justice of the European (CJEU) in Hauck GmbH & Co KG v Stokke A/S. The case involves competing furniture manufacturers - the German company Hauck GmbH & Co KG (Hauck) and Dutch company Stokke. In 1972, Stokke launched a children's high chair known as the 'Tripp Trapp' (the Tripp Trapp shape). It consists of two sloping L-shaped uprights, to which all other elements of the chair are attached, and a set of sliding plates which allow the height of the chair to be adjusted:
In 1998, Stokke filed an application to register the Tripp Trapp shape as a trade mark in the Benelux. The trade mark proceeded to registration for "chairs, especially high chairs for children." Hauck also manufactured and distributed children's products, including two models of children's chairs named the 'Alpha' and 'Beta'. Stokke brought legal proceedings against Hauck in the Netherlands on the basis that the "Alpha" and "Beta" chairs infringed its Benelux registration for the Tripp Trapp shape. In its defence, Hauck brought a counterclaim seeking a declaration of invalidity against the registration. The Rechtbank’s-Gravenhage (District Court) upheld Hauck's counterclaim and Stokke appealed. The Gerechtshofte’s-Gravenhage (Court of Appeal) also upheld Hauck's counterclaim and so another appeal was filed, this time at the Hoge Raad der Nederlanden (Supreme Court of the Netherlands). The Supreme Court referred several questions to the CJEU, seeking clarity on the interpretation of the first and third indents of Article 3(1)(e) of First Council Directive 89/104/EEC which state:
"(3) The following shall not be registered or if registered shall be liable to be declared invalid:
(e) signs which consist exclusively of:
- the shape which results from the nature of the goods themselves, or....
- the shape which gives substantial value to the goods"
The questions referred were:
1. Is the first indent to be interpreted as meaning that the ground for refusal may apply only to a sign which consists exclusively of the shape which is indispensable to the function of the product in question or may it also apply to a sign which consists exclusively of a shape with one or more characteristics which are essential to the function of that product and which consumers may be looking for in the products of competitors?
2. Is the third indent to be interpreted as meaning that the ground for refusal may apply to a sign which consists exclusively of the shape of a product with several characteristics each of which may give that product substantial value, and is it necessary to consider the public’s perception of the shape during that assessment?
The CJEU found that to interpret the first indent as applying only to signs which consist exclusively of shapes which are indispensable to the function of the goods in question would mean that only "natural" products (which have no substitute) and "regulated" products (the shape of which is prescribed by legal standards) would be refused registration, even though such signs would be ineligible for registration in any event due to their lack of distinctive character. Accordingly the CJEU ruled that "shapes with essential characteristics which are inherent to the generic function or functions of such goods" must also, in principle, be denied registration, adding that "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. Moreover, it is clear that those are essential characteristics which consumers will be looking for in the products of competitors, given that they are intended to perform an identical or similar function."
On the third indent, the CJEU noted that the fact that the shape of a product gives it substantial value does not preclude other characteristics from also adding value. As such, the exclusion under the second indent "cannot be limited purely to the shape of products having only 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." It must apply to products which, in addition to its aesthetic element, perform other functions. In assessing whether the characteristics of the product add significant value, the CJEU ruled that consumer perception can be taken into account. But other factors should also be considered, for instance the nature of the category of goods concerned, the artistic value of the shape in question and its dissimilarity from other shapes in common use on the market concerned.
The CJEU also confirmed that the first and third indents operate independently of each other and may not be applied in combination.
The decision clarifies the scope of the exclusions under Article 3(1)(e) and ensures that they are not interpreted restrictively, in a manner that would be contrary to the intent of the provisions. The case will now go back to the Supreme Court in the Netherlands which will make its ruling on the validity of the Tripp Trapp shape registration.