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UNITARY PATENT

In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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Stokke Tripp up in the European Court

If you are the parent of a toddler, the chances are that you might own a striking, yet practical (and rather expensive) Tripp Trapp high chair.
The Tripp Trapp high chair was designed by Peter Opsvik in the early 1970s, revolutionising the high chair market. Over the years, the design has been feted, winning several prizes, and has been displayed in museums.

Since 1972, Stokke has marketed the Tripp Trapp high chair, in particular in Scandinavia. Since 1995, they have also sold the product in the Netherlands.

On 8 May 1998, Stokke filed a Benelux trade mark application for the 3D shape of their Tripp Trapp high chair design seen on this page. The trade mark was registered for “chairs, especially high chairs for children”.

Hauck, the defendant in this case, manufacture, distribute and sell children’s articles including two high chairs, Alpha and Beta, which, from Stokke’s perspective, were similar to their famous Tripp Trapp high chair design.

Stokke sued Hauck in the Dutch courts for trade mark infringement claiming that their Alpha and Beta high chair designs infringed the Benelux Tripp Trapp registration. Hauck, not surprisingly, filed a counterclaim to invalidate the trade mark registration on the basis that its shape was determined by the nature of the product itself and that its aesthetically pleasing appearance gave the high chair substantial value (contrary to Article 3(1)(e)(i) and (iii) of the Trade Marks Directive 2008/95/EC).

By way of a reminder, Article 3(1)(e) of the Directive states:

1. The following shall not be registered or, if registered, shall be liable to be declared invalid:

e) signs which consist exclusively of:
(i) the shape which results from the nature of the goods themselves;
(ii) the shape of goods which is necessary to obtain a technical result;
(iii) the shape which gives substantial value to the goods.

The Dutch Court of First Instance, the Hague District Court, upheld Hauck’s counterclaim that the Benelux trade mark registration was invalid. Stokke appealed against this adverse decision. 

The Court of Appeal also agreed with Hauck holding that “the attractive appearance of the “Tripp Trapp” chair gave the product substantial value and that its shape was determined by the very nature of the product – a safe, comfortable, reliable children’s chair”.
Stokke appealed again, this time to the Dutch Supreme Court (HogeRaad), which referred the following questions to the European Court (CJEU; Hauck GmbH v Stokke A/S, (Case C-205/13)) regarding the interpretation of Article 3(1)(e) of the Trade Marks Directive,

1.(a) Does the ground for refusal or invalidity in [the first indent of] Article 3(1)(e) of [the Trade Marks Directive], namely that [three-dimensional] trade marks may not consist exclusively of a shape which results from the nature of the goods themselves, refer to a shape which is indispensable to the function of the goods, or can it also refer to the presence of one or more substantial functional characteristics of goods which consumers may possibly look for in the goods of competitors?

​(b) If neither of those alternatives is correct, how should the provision then be interpreted?

2.(a) Does the ground for refusal or invalidity in [the third indent of] Article 3(1)(e) [of the Trade Marks Directive], namely, that [three-dimensional] trade marks may not consist exclusively of a shape which gives substantial value to the goods, refer to the motive (or motives) underlying the relevant public’s decision to purchase?

(b) Does a “shape which gives substantial value to the goods” within the meaning of the aforementioned provision exist only if that shape must be considered to constitute the main or predominant value in comparison with other values (such as, in the case of high chairs for children, safety, comfort and reliability) or can it also exist if, in addition to that value, other values of the goods exist which are also to be considered substantial?

(c) For the purpose of answering Questions 2(a) and 2(b), is the opinion of the majority of the relevant public decisive, or may the court rule that the opinion of a portion of the public is sufficient in order to take the view that the value concerned is “substantial” within the meaning of the aforementioned provision?

(d) If the latter option provides the answer to Question 2(c), what requirement should be imposed as to the size of the relevant portion of the public?

3. Should Article 3(1)(e) of [the Trade Marks Directive] be interpreted as meaning that the ground for exclusion referred to in subparagraph (e) of that article also exists if the [three-dimensional] trade mark consists of a sign to which the content of [the first indent] applies and which, for the rest, satisfies the content of [the third indent]?’

The European Court began by referring to the Lego Juris v OHIM case (C-48/09P), stating that there is a public policy behind preventing the registration of purely functional shapes (under Article 3(1)(e)(ii)) and those which give substantial value to the goods (under Article 3(1)(e)(iii)), namely, “to prevent the exclusive and permanent right which a trade mark right confers from serving to extend indefinitely the life of other rights which the EU legislature has sought to make subject to limited periods”.

The shape results from the nature of the goods (Article 3(1)(e)(i))

The Court held that to apply Article 3(1)(e)(i), it is necessary to identify the essential characteristics (of the shape), i.e. the most important elements, that identification being based either on the overall impression (of the shape) or on an examination of each of the components.

The Court stated that an objection cannot apply under Article 3(1)(e)(i) when decorative or imaginative elements, independent of functionality, play an important role.

The Court also held that Article 3(1)(e)(i) “may apply to a sign which consists exclusively of the shape of a product with one or more essential characteristics which are inherent to the generic function or functions of that product and which consumers may be looking for in the products of competitors”.

The shape gives substantial value (Article 3(1)(e)(iii))

The Court noted that this provision “…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”.

The objection may also apply to a sign which has several characteristics, each of them adding substantial value.

In assessing whether a shape gives “substantial value” to the goods, the Court held that “the presumed perception of the sign by the average consumer is not a decisive element”. It is just one of the assessment criteria to be used to determine whether the ground for refusal applies. Other assessment criteria listed in the judgment include the nature of the category of goods concerned, the artistic value of the shape, a substantial price difference in relation to similar products and the development of a promotional strategy, which focuses on accentuating the aesthetic characteristics of the product.

More generally, the CJEU also held that the three separate grounds of Article 3(1)(e) i.e. the shape results from the nature of the goods, has a technical function or gives substantial value to the goods, operate independently of one another. Therefore if any of the criteria listed in Article 3(1)(e) is satisfied, the shape cannot be registered as a trade mark.

Comment

Whilst the European Court’s decision provides some much needed clarity regarding the interpretation of Article 3(1)(e), it still doesn’t define what giving “substantial value” to the goods means.

It would appear that success or failure under Article 3(1)(e)(iii) will turn on the facts of each case and those companies, such as Stokke, which invest heavily in the design of their products to appeal to customers, will find it virtually impossible to register their shapes as trade marks. As readers will remember, acquired distinctiveness doesn’t save a shape mark that falls foul of Article 3(1)(e). These companies will instead have to look to registered designs to protect their shapes. This, of course, is a time limited IP right.

It will also be interesting to see how the European Court interprets this judgment when it answers the questions the UK High Court has referred in Nestlé’s appeal concerning the refusal of their trade mark application to register the 3D shape of their Kit Kat chocolate bar (discussed in the Autumn 2014 edition of MakeYour Mark).