Thursday, 2 October 2014

Court of Justice rules on the validity of the three-dimensional Tripp-Trapp trademark

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.