Cabinet Beau de Loménie
After the Bang & Olufsen case rendered by the First Instance Court of the European Union about trademark protection for the shape of loudspeakers (case T-508/08 Bang & Olufsen A/S v OHIM,October 6, 2011), the Court of Justice of the European Union (CJEU) ruled on September 18 this year, on a request concerning the implementation of Article 3.1 (e) of the First Council Directive 89/104/EEC of December 21, 1988 to approximate the laws of the Member States relating to trademarks. This article excludes protection when “the sign to be filed as a trademark consists exclusively of the shape which gives substantial value to the goods”.
The case C-205/13 was between the German company Hauck and the Norwegian company Stokke. It concerned a cancellation action filed against the Benelux trademark registration of the shape of a children’s chair, marketed by Stokke, called the “Tripp Trapp” chair.
Tripp Trapp chairs have been marketed by Stokke since 1972. On the other side, Hauck had been manufacturing, distributing and selling children’s articles including two chairs called Alpha and Beta. On May 8, 1998, Stokke filed an application with the Benelux Office for Intellectual Property for a three-dimensional trademark for the shape of the Tripp Trapp chair designating “chairs, especially high chairs for children”.
Stokke, claiming that the Alpha chair was infringing its rights in the Benelux countries, brought an action in the Netherlands before the District Court of The Hague, claiming copyright and trademark infringement. Hauck counterattacked with an action to invalidate the trademark, which was rejected.
Hauck then appealed against that decision to the Court of Appeal of The Hague. The court held then that the attractive appearance of the Tripp Trapp chair gave the product its substantial value and that its shape was determined by the nature of the product. Consequently, the trademark was cancelled.
In appeal, Supreme Court of the Netherlands decided that an interpretation of Article 3.1 (e) of the EU Trademarks Directive by the CJEU was needed.
Therefore several questions were raised in relation to what “the shape which results from the nature of the goods themselves” means. Does it mean that the shape is indispensable to the function of the goods or how should the provision be interpreted?
What “shape which is indispensable to the function of the product” means
The CJEU first stated, with reference to the Lego Juris v OHIM case C-48/09 of September 14, 2010, that the purpose of the prohibition for registration of such a sign was to avoid protection by trademark, without time limitation, after other rights that were ended. Then the court considered that in order to apply the relevant part of Article 3.1 (e) of the EU Trademarks Directive correctly, it is necessary to identify the essential characteristics of the sign on a case-by-case basis. The court added that this assessment can be based either on the overall impression produced by the sign or on an examination of each of the components of that sign in turn.
This ground for refusal cannot apply when the trademark relates to a shape in which decorative or imaginative elements independent of the function of the goods play an important role, but when shapes have essential characteristics which are inherent to the generic function or to the functions of such goods, they must be denied registration.
Reserving such characteristics to a single economic operator by allowing a trademark registration would indeed impede competitors from giving their goods a shape which would be suited to the use for which those goods were intended. Moreover, it is clear that those are essential characteristics which consumers will be looking for given that they are intended to perform an identical or similar function.
The “shape which gives substantial value to the goods”
Turning now to what the “shape which gives substantial value” means, the court considered that this can apply to products having several characteristics, each of them giving substantial value.
Thus this concept of “substantial value” cannot be limited purely to the shape of products having artistic or ornamental value only.
In the present case, the shape of the Tripp Trapp chair not only gives an aesthetic value to the chair, but at the same time had other significantly valuable characteristics such as safety, comfort and reliability.
Moreover, the perception of the product’s shape by the public, in contrast with the situation referred to in EU Trademark Directive Article 3.1 (b), about signs devoid of distinctive character, is not a decisive element in relation to the notion of substantial value, but may be one of the assessment criteria used by the competent authority in determining the essential characteristics of the product.
That means that other criteria may be taken into account, such as the nature of the category of products, the artistic value of the shape, the existence and lack of similarity of other shapes, price difference, or promotional strategy focusing on the aesthetic aspect of the product.
The independence of the grounds for refusal of registration
The court was asked to say whether the grounds for refusal of registration set out in the relevant parts of Article 3.1 (e) of the Directive were to be applied in combination. The court confirmed that the three grounds provided in this article, ie, shape resulting in the nature of the goods, technical result, and shape giving substantial value, operate independently.
As a result of the Stokke decision, and following the decision rendered in the Bang & Olufsen case, the registration and the protection of tri-dimensional trademarks become almost impossible to implement today.