Rulings both at national (Italian) and European level often deal with the registrability of shapes of products as trademarks: we have talked about the subject herehere (in Italian), and here (in Italian) on this blog.

By judgment of 18 September (C-205/13), the Court of Justice of the European Union (“CJEU”) has returned to the subject. The preliminary ruling concerned the interpretation of Article 3(1)(e) of Directive 89/104/EEC relating to trademarks, which—in conformity with Article 7(1)(e) of Regulation (EC) No. 207/09 and Article 9 of the Italian Intellectual Property Code – provides that “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”,

shall not be registered or if registered shall be liable to be declared invalid.

In the proceedings, one of the parties stated that the shape of the children’s chair “Tripp Trapp” of Stokke (pictured below) could not be registered as a trademark because it fell under the above-mentioned first and third grounds for refusal: in particular, the party stated that the shape was determined by the nature of the product (i.e. that of “a safe, comfortable, reliable children’s chair”) and that “the attractive appearance of the ‘Tripp Trapp’ chair” gave it substantial value.

Click here to view image.

Regarding the first ground for refusal (“the shape which results from the nature of the goods themselves”), the referring court asked whether that refers only to a shape which is indispensable to the function of the goods, or also, as in this case, to the shape that is linked to one or more essential functional characteristics of the product (safety, comfort and quality), which consumers may possibly look for in the products of competitors. The CJEU agreed with the second option, noting that otherwise “reserving 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” (paragraph 26).

Concerning the third ground for refusal (“the shape which gives substantial value to the goods”), the referring court asked, in essence, whether the shape which gives significant aesthetic value to the product, such as that of the Stokke chair, falls within that prohibition when the product also presents other characteristics (safety, comfort and quality) that give it substantial value. In this regard, the CJEU confirmed that “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 of Article 3(1)(e) of the trade marks directive not be automatically ruled out when, in addition to its aesthetic function, the product concerned also performs other essential functions. Indeed, 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” (paragraphs 31 and 32).

In addition to the above-mentioned questions, the referring court asked the CJEU whether the above-mentioned two grounds for refusal could be applied in combination. It can be seen from the Opinion of the Advocate General that the doubts of the referring court stemmed from the fact that the shape of the product had some characteristics that gave it substantial value, and at the same time other characteristics resulting from the nature of the product. In that regard, the CJEU specified—even though with a ruling that was not very clear—that the three grounds for refusal of registration set out in Article 3(1)(e) have an independent character: to deny registration, it is necessary that at least one of the three is fully applicable.

It will now be up to the national court to apply the interpretation criteria provided by the CJEU and see if the shape of the Stokke chair falls within the prohibitions of registration imposed by law. However, the decision of the CJEU appears in the sense of denying the registrability of the product’s shape.