The 18 September 2014 ruling by the
Court of Justice of the European Union (CJEU) (C-205/13, "Tripp-Trapp" case) has
added definition to the interpretation of specific three-dimensional shapes
for registration as trademarks.
Tripp-Trapp is the name
given to a children's highchair created by the Danish designer Peter Opsvik and
sold by the Stokke company since 1972. The highchair is designed so that the
height of the chair can be regulated as the child grows The originality of the
design is not disputed, as demonstrated by the fact that the proceedings that
prompted the request for a preliminary ruling as well as parallel proceedings
in Germany both concluded that the chair in question fulfils the originality
requirement for entitlement to copyright protection. However, the issue of
trademark rights is a different matter.
As we all know, trademark protection is
virtually indefinite, which is why, on occasion, rightholders of industrial
designs and even copyright in product shapes may find it attractive to try to
perpetuate protection by means of trademarks. Lawmakers were aware of this when
the First Council Directive 89/104/EEC to approximate the laws of the Member
States relating to trademarks was drawn up to include, under Article 3(1)(e),
specific grounds for the refusal or invalidity of signs consisting 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.
As a result, when the German company Hauck
GmbH & Co. KG ("Hauck”) began to market its Alpha and Beta chairs
using a design that was very similar to that of the Tripp-Trapp chair, Stokke
decided to take action on grounds not only of copyright but also of its
three-dimensional trademark registered in 1998:
Hauck subsequently filed a countersuit
claiming that the said trademark was invalid because the design ensues from
product function rather than acting as an indicator of business origin. On
appeal the Hoge Raad der Nederlanden (Supreme Court of the Netherlands) decided
to stay the proceedings to refer a series of questions dealing with how to
interpret the said ground for refusal to the CJEU for preliminary rulings.
