The absolute grounds for the refusal (or invalidity) of shape marks remain a much discussed topic. While the Philips/Remington case has provided some clarity regarding the "technical functionality" ground, unfortunately the same cannot be said for the "nature of the goods" and in particular also the "substantial value" grounds.
The referral of questions regarding the latter ground in the Trianon/Revillon case led to a glimmer of light at the end of the tunnel, but that was quickly dimmed when the case (C-2/12) was removed from the CJEU's docket.
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However, a recent advisory opinion of the Advocate-General in yet another Dutch case (Hauck/Stokke, concerning the Stokke "Tripp Trapp" children's chair) has rekindled the light. In view of the similarity with the Trianon/Revillon case, it seems highly likely that the Dutch Supreme Court will again refer questions to the CJEU, although the Court itself will of course determine the exact wording of those questions.
The questions proposed by the A-G in the Hauck/Stokke case are as follows:
1. Regarding the ground for refusal or invalidity laid down in Article 3(1)(e)(i) of Directive 89/104, as codified in Directive 2008/95 – i.e. that (shape) trade marks may not consist exclusively of a shape which results from the nature of the goods themselves – does this entail:
(a) a shape that is indispensable for the function of the goods, where "indispensable" is understood to mean the absence of an alternative (or of a realistic alternative)?;
or does the ground already arise
(b) in the event that there are one or more features/essential features relating to the use of the goods which the consumer may conceivably look for in competitors' goods?;
(c) is there another interpretation?
2. Insofar as it transpires that the answer to question 1 corresponds, either wholly or in part, with the answer to question 3, to what extent are the answers to questions 4, 5 and 6 of relevance in the interpretation (or further interpretation) of the ground for refusal or invalidity referred to in question 1?
3. Does the ground for refusal or invalidity laid down in Article 3(1)(e)(iii) of Directive 89/104, as codified in Directive 2008/95 – i.e. that trade marks (in the form of a shape) may not consist exclusively of a shape which gives substantial value to the goods – entail consideration of the motive(s) of the relevant public for the purchase decision?
4. In order for a shape to give "substantial value to the goods" within the meaning of the abovementioned rule
(a) is it necessary that the shape be regarded as the main or predominant value in comparison to other kinds of value (in the case of children's chairs, for example, this could consist of characteristics such as: safe, reliable, durable, comfortable and sound, as well as (whether or not as a consequence) educationally and ergonomically responsible), or
(b) can a shape also give "substantial value to the goods" if, besides that main or predominant value in comparison to other kinds of value, the goods also have other kinds of value that can be regarded as substantial (in the case of children's chairs, for example, this could be the design (aesthetic attraction value, attractive appearance, handsome style and suchlike))?
5. Is the perception of the majority of the relevant public decisive for the answer to question 4, or can the court hold that the perception of a part of the public is sufficient for the value in question to be viewed as "substantial" within the meaning of the abovementioned provision?
6. If the answer to the second part of question 5 is yes, what requirement is to be imposed on the size of the relevant part of the public?
7. Does the system of Article 3(1)(e) of Directive 89/104, as codified in Directive 2008/95, permit the competent authority, bearing in mind the rationale of Art. 3(1)(e) of the First Trade Marks Directive and the public interest to be served thereby, to decide that the partial fulfilment of, in each case, one of multiple sub-criteria can still result in the exclusion from trade mark protection of the shape for which a trade mark is claimed?