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tripping over 3D hurdles

30 January 2015

A preliminary ruling in the recent "Tripp Trapp" childrens chair dispute clarifies issues in addition to distinctiveness that brand owners should be aware of when looking to register 3D trade marks of their product shapes.

The case concerned the validity of a Benelux trade mark registration of the shape of famous L-shaped "Tripp Trapp" chair (marketed by the Dutch company Stokke).

Haucks "Alpha" and "Beta" childrens chairs were considered to bear a strong resemblance to the "Tripp Trapp" chair. Stokke sought to enforce its trade mark rights, resulting in the inevitable call for Stokkes trade mark to be invalidated.

Invalidity was alleged under Article 3(1)(e) of the Trademarks Directive on the basis that:

  • the shape was determined by the very nature of the product itself; and
  • the sign consisted only of a shape that gave substantial value to the goods.

The national court referred questions to the Court of Justice of the European Union for a preliminary ruling regarding interpretation of these grounds.

Shape determined by the nature of the product itself

The Court stressed that the first mentioned grounds was not restricted to preventing registration only of "natural" or "regulated" products. Although it does not apply to signs which included an essential or important element which is not inherent to the generic function of the goods (i.e. a decorative or imaginative element), it does extend beyond signs which consist exclusively of shapes which are indispensable to the function of the goods. The Court therefore ruled that this provision covers signs which consist "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."

Accordingly, to assess their prospects of obtaining a registration, owners will have to consider the essential characteristics of their product shape on a case-by-case basis to assess whether any of them are not inherent to the generic function of the goods

Sign consisting only of a shape that gives substantial value to the goods

The Court emphasised that goods could derive substantial value from several characteristics as opposed to purely aesthetic value and still be caught by this grounds of objection. Using the example of the "Tripp Trapp" chair, its value could also derive from characteristics including the safety, comfort and reliability of the product. It is therefore possible for product shapes which have essential functional characteristics as well as a significant aesthetic element to be refused registration or be declared invalid on this basis, if the criteria of this provision are fulfilled.

The Court also noted that the public perception of the shape is only one of the relevant factors which "may" be taken into account when assessing whether the shape gives substantial value to the goods Other possibly relevant factors include (i) the artistic value of the shape in question and any promotion strategy which focuses on accentuating the aesthetic characteristics of the product (ii) the shapes dissimilarity from other shapes in common use on the market concerned and (iii) a substantial price difference in relation to similar products.

This article was first published in ITMA Review

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