IP and IT Law Bytes: Trade marks: validity of shape

30 October 2014

The European Court of Justice (ECJ) has provided guidance on questions relating to the validity of three-dimensional shape marks in the form of children’s chairs.

Background

The Trade Marks Directive (2008/95/EC) (the Directive) sets out the grounds for refusal and invalidity of signs as trade marks. Signs that cannot be accepted as trade marks include those that consist exclusively of:

  • The shape which results from the nature of the goods themselves (Article 3(1)(e)(i), the Directive).
  • The shape which is necessary to obtain a technical result (Article 3(1)(e)(ii), the Directive).
  • The shape which gives substantial value to the goods (Article 3(1)(e)(iii), the Directive).

In Lego Juris v A/S v OHIM and MEGA Brands, the European Court of Justice held that the national court must first identify the most important elements of the shape (its essential characteristics) (www.practicallaw.com/8-503-6976). The court may base its assessment of shapes resulting from the nature of the goods either on the overall impression that the sign gave, or by examining each component of the sign in turn. The grounds for refusal under Article 3(1)(e) of the Directive (Article 3(1)(e)) were not applicable if a decorative or imaginative element, not inherent in the generic function of the goods, played an important or essential role in the shape.

Facts

S marketed a children’s high chair called the Tripp Trapp and registered its three-dimensional shape as a Benelux trade mark. H began selling similar chairs and was sued by S in Holland for infringement of its copyright in the Tripp Trapp and infringement of the Benelux trade mark. H counterclaimed for a declaration of invalidity of the mark.

The Dutch Court upheld S’s copyright infringement claim but declared its shape mark invalid. On appeal, the Netherlands Supreme Court referred preliminary questions to the ECJ.

Decision

The ECJ confirmed that the main aim of Article 3(1)(e) was to prevent trade mark registrations being used to monopolise technical solutions or functional characteristics of products. All three limbs pursued the same objective, and each must be interpreted consistently with the other two limbs.

The concept of a shape which results from the nature of the goods themselves covered shapes with essential characteristics that were inherent to the generic function or functions of such goods, being characteristics that consumers might look for in the products of competitors.

The ground relating to “substantial value” covered not only aesthetic characteristics but also extended to other characteristics (for example, safety, comfort and reliability) that gave the shape essential functional value. The way in which consumers perceive the shape of the product is not decisive, although it might be one relevant factor that the court can take into account.

The various grounds of refusal under Article 3(1)(e) are not to be applied in combination, but independently of each other. If one limb is satisfied, the shape cannot be registered, but registration cannot be refused unless one ground is satisfied, not a combination of two.

Comment

This decision confirms that even if a design does not fall foul of the nature of the goods limb because the decorative or imaginative element plays an essential role in the shape, it may still be found invalid if aspects of the shape other than aesthetic considerations give the chair functional value; for example, making it safe, comfortable, reliable. The focus on how consumers regard the essential characteristics of the shape, and so whether competitors need to use those characteristics in order to compete effectively in goods of that kind, shows the delicate balance between trade mark rights and consumers’ interest in effective competition, as well as where to draw the line between the protection of product shapes by design or copyright law on the one hand, and trade mark law on the other.

Case: Hauck GmbH & Co KG v Stokke A/S and others C-205/13.

First published in the November 2014 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.

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