On September 18, 2014, the European Court of Justice handed down an interesting decision on the validity as a trademark of the shape of products.

Subject of the judgment is Article 3 (1) (e) of Directive no. 89/104 / EEC relating to trade marks, which provides that shall not be registered or, if registered, may be declared invalid “i) the shape which results from the nature of the goods themselves, or ii) the shape of goods which is necessary to obtain a technical result, or iii) the shape which gives substantial value to the goods”.

In the case at hand Stokke filed in the Netherlands a complaint against the German company Hauck GmbH & Co. KG for the unlawful and infringing manufacturing and marketing of its chairs «Alpha» and «Beta», which were assumed violating of Stokke’s copyright deriving from the «Tripp Trapp» chair, other than its trademark rights having as a subject matter the shape below reproduced:

Click here to view image.

In its defence, Hauck brought a counterclaim seeking a declaration that the Benelux trademark «Tripp Trapp» filed by Stokke A/S was invalid, asserting the violation of the first and third indent to the registration, in consideration of the fact that the shape of the chair is conditioned by the same nature of such product – i.e. a child’s chair which is safe, comfortable and of high quality – and that the aesthetic aspect of the chair gives it a substantial value.

The Court of First Instance upheld Stokke’s claim, especially considering that the «Tripp Trapp» chair was subject to protection under copyright and that the chairs «Alpha» and «Beta» fall within the scope of such protection, concluding that Hauck had violated Stokke’s copyright. However, the Court of the Netherlands cancelled the applicant's trademark, considering that the attractiveness of the appearance of the «Tripp Trapp» chair gives substantial value to the product in question and that its shape is determined by the nature of the product. The appeal court upheld the decision of first instance for the same grounds.

Hauck lodged an appeal in Cassation before the Hoge Raad der Nederlanden and Stokke filed a cross-appeal in such proceedings. The Hoge Raad der Nederlanden dismissed the appeal on points of law, but held that the appeal involves three questions of interpretation of the provisions of Article 3, paragraph 1, letter e) of the trade marks directive.

With reference to the indent relating to the “shape which results from the nature of the goods themselves”, the ECJ held that a subject may not validly register 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.

By the second question the Court was requested to determine whether the shape which gives an aesthetic value is a significant impediment even in the case where the chair presents other characteristics (safety, comfort, quality) which gives the product a substantial value. The Court held that “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”. The Court therefore stated that the third indent of Article 3(1)(e) of the trade marks directive 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.

Finally, the ECJ found that the impediments referred to in Article 3 (1) (e) of Directive no. 89/104/EEC are each an individual independent cause of invalidity of the mark.

This decision could have a significant impact on the validity of already registered trademarks consisting in a shape and the choice to file in the future trademarks applications for the shape of products.