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Tuesday, 21 October 2014

Tripp Trapp and the Third Dimension: a study in trade mark registrability

It's catch-up time again as the impossible quest to keep abreast of all the major IP rulings continues and this Kat gets the feeling that he is not so much making progress as merely chasing his tail.  Case C‑205/13 Hauck GmbH & Co. KG v Stokke A/S, Stokke Nederland BV, Peter Opsvik and Peter Opsvik A/S was decided on 18 September, but this Kat -- who has been beset by a succession of happy distractions -- has only just got round to writing it up for the weblog.  It's a ruling of the Second Chamber of the Court of Justice of the European Union (CJEU) which, as is so often the case, seems somehow less important after judgment has been given than we thought it might be when we were still awaiting it in a state of attentive uncertainty. 


The background to this action is that Opsvik designed the well-known ‘Tripp Trapp’ children’s chair which, explained the CJEU, was "constructed with sloping uprights, to which all elements of the chair were attached, as well as an L-shaped frame of uprights and gliders (sliding plates) which, according to the referring court (the Hoge Raad der Nederlanden, the Supreme Court of the Netherlands) give it a high level of originality". This chair design had won praises and prizes and had even been displayed in museums. Stokke made and sold ‘Tripp Trapp’ chairs in Scandinavia from 1972 and in the Netherlands since 1995.  In May 1998 Stokke applied to register as a Benelux trade mark a three-dimensional trade mark resembling the ‘Tripp Trapp’ children’s chair. The trade mark was registered in the name of Stokke for ‘chairs, especially high chairs for children’ and was represented by the shape depicted on the right. 

But Stokke was not alone in the market: Hauck made, distributed and sold its own children’s articles, including two chairs named ‘Alpha’ and ‘Beta’.  In Germany, in proceedings between the same parties, the Oberlandesgericht Hamburg (Higher Regional Court, Hamburg) held that the ‘Tripp Trapp’ chair was protected by German copyright and that the ‘Alpha’ chair infringed that copyright.

No doubt fortified by this ruling, Stokke then brought a separate action in the Netherlands before the Rechtbank ’s-Gravenhage (District Court, The Hague), claiming that Hauck’s making and selling of the ‘Alpha’ and ‘Beta’ chairs infringed both its copyrights and its Benelux trade mark registration, seeking damages.  Hauck counterclaimed for a declaration that Stokke’s Benelux Tripp Trapp trade mark was invalid.  At trial, the Rechtbank fully upheld Stokke’s claims in so far as they were based on what the CJEU calls Stokke’s "exploitation rights", but also upheld the counterclaim for a declaration that the Benelux trade mark was invalid.

Hauck then appealed to the Gerechtshof te’s-Gravenhage (Court of Appeal, The Hague, Netherlands), which again held that the ‘Tripp Trapp’ chair was protected by copyright and that the ‘Alpha’ and ‘Beta’ chairs came within the scope of that copyright, but that the registration of the three-dimensional trade mark was invalid.  In its view the attractive appearance of the ‘Tripp Trapp’ chair gave that product substantial value and its shape was determined by the very nature of the product — it being a safe, comfortable, reliable children’s chair. Thus, said the Gerechtshof, that mark was a sign consisting exclusively of a shape corresponding to the grounds for refusal or invalidity set out in the first and third indents of Article 3(1)(e) of First Council Directive 89/104, this directive having been repealed and substantially re-enacted by the current trade mark directive, Directive 2008/95 [Katnote: the three indents in Article 3(1)(e) bar and/or invalidate registration of
(e) signs which consist exclusively of:
- the shape which results from the nature of the goods themselves, or
- the shape of goods which is necessary to obtain a technical result, or
- the shape which gives substantial value to the goods].
Hauck then brought a further appeal in cassation before the Hoge Raad, while Stokke lodged a further cross-appeal. The referring court rejected Hauck's appeal, but considered that the cross-appeal on the issue of registrability of the trade mark called for the interpretation of Article 3(1)(e) of the directive which, to date, has not been covered by the CJEU's case-law.  This being so, it decided to stay the proceedings and refer the following questions to the Court of Justice for a preliminary ruling:

‘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 looks 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 CJEU ruled as follows:

* In terms of interpretation, the ground for refusal of registration set out in the first indent of Article 3(1)(e) pursues the same objective as the grounds set out in the second and third indents and must therefore be interpreted in a way that is consistent with the aims of the other two indents. Thus, when applying the first indent correctly, you have to identify the essential characteristics — ie the most important elements — of the sign concerned on a case-by-case basis [in other words, don't imagine for a moment that a characteristic that is found to be caught by the indent in one case will be equally caught by it in another], basing your assessment either on the overall impression produced by the sign or on an examination of each the components of that sign in turn [This is interesting: when comparing marks for the purposes of opposition or infringement, one has to go for the overall impression of each rather than salami-slicing them into individual similar or dissimilar components, as in Case C-329/02SAT.1 SatellitenFernsehen v OHIM. However, when separating registrable from unregistrable elements of the same mark, an overall assessment or the piecemeal approach are equally acceptable].

* When applying the first indent, you also have to take account of the fact that the concept of a ‘shape which results from the nature of the goods themselves’ means that shapes with essential characteristics which are inherent to the generic function or functions of such goods must, in principle, also be denied registration. The reservation of 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 -- these being the essential characteristics that consumers look for in the products of competitors, given that they are intended to perform an identical or similar function [what about features of shape that that are not essential, but which give rise to essentiality with regard to the shape of other goods which are intended to be interoperative with them?].


The fact that the shape of a product is regarded as giving it substantial value does not mean that other characteristics may not also give the product significant value [Hmm, wonders Merpel: what, at para.30, is the difference between "substantial" and "significant"?]. Thus "the aim of preventing the exclusive and permanent right which a trade mark confers from serving to extend indefinitely the life of other rights which the EU legislature has sought to make subject to limited periods requires that the possibility of applying the third indent ... not be automatically ruled out when, in addition to its aesthetic function, the product concerned also performs other essential functions".

* The concept of a ‘shape which gives substantial value to the goods’ 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.

* Where the perception of the target public must be taken into account since it is essential for the purposes of determining whether the sign filed for registration as a trade mark enables the goods or services concerned to be recognised as originating from a particular undertaking, that obligation cannot be imposed in the context of Article 3(1)(e).

* While the presumed perception of the sign by the average consumer is not a decisive element when applying the third indent, it may still be a relevant criterion of assessment when identifying the essential characteristics of that sign. 

* The three grounds for refusal of registration in the indents to Article 3(1)(e) operate independently of one another. as is shown by the fact that they are set out as successive points, coupled with the use of the word ‘exclusively’. This being so, the fact that a sign can be denied registration on the basis of a number of grounds for refusal is irrelevant so long as any one of those grounds fully applies to that sign.

Accordingly, the CJEU summarises its position as follows:

1.      The first indent of Article 3(1)(e) ... must be interpreted as meaning that the ground for refusal of registration set out in that provision 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.

2.      The third indent of Article 3(1)(e) ... must be interpreted as meaning that the ground for refusal of registration set out in that provision 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. The target public’s perception of the shape of that product is only one of the assessment criteria which may be used to determine whether that ground for refusal is applicable.

3.      Article 3(1)(e) ... must be interpreted as meaning that the grounds for refusal of registration set out in the first and third indents of that provision may not be applied in combination.

There are no surprises in this ruling, which now leaves it for the Hoge Raad to apply it on the facts as found.  This, on Merpel's reading, makes it look likely that the Tripp Trapp chair's days as a registered Benelux shape mark are numbered.

Falling out of high chairs here
More on Tripp Trapp here
Von Trapp here

Finally, here's a special report by Katfriend and noted IP scholar Henning Hartwig (Bardehle Pagenberg), which discusses this case in greater analytical depth.

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