The interpretation concerning certain three-dimensional shapes in relation to the registration of trademarks is better defined after the Judgment of the Court of Justice (CJ) of September 18, 2014 (C-205 / 13, “Tripp-Trapp” case).
Tripp-Trapp This is how the chair designed by the Danish Peter Opsvik and marketed since 1972 by the Stokke company is known. It is a baby chair whose design includes a mechanism that allows the height to be adapted as the child grows. The originality of the design is not disputed, proof of this is that both in the process that caused the present preliminary question and in a parallel process that was processed in Germany, it is concluded that The aforementioned chair meets the originality requirements to benefit from copyright protection. Things change, of course, when it comes to trademark rights..
As is well known, the protection granted by trademark law is virtually indefinite, so it can sometimes be attractive for owners of models, designs and even copyrights on product shapes to try to perpetuate the protection. that grant these rights through the brand. The legislator was aware of this when in the First Directive 89/104 / EEC relating to the approximation of the laws of the Member States on trademarks, includes, in its article 3(1)(e), a specific cause of refusal or nullity applicable to signs constituted exclusively by:
– the form imposed by the nature of the product itself, or
– the shape of the product necessary to obtain a technical result, or
– the form that gives substantial value to the product;
Thus, when the German company Hauck GMBH & Co. KG (“Hauck”), begins to market its chairs Alpha y Beta, with a design very similar to that of the chair Tripp-Trapp, the Stokke company decides to take action not only based on copyright, but also invokes a three-dimensional trademark registered in 1998:
Hauck then counterclaims, alleging that the trademark in question would be void because it is a design that responds to the functionality of the product and not to the indication of business origin. Already in cassation, the Hoge Raad der Nederlanden (Supreme Court of the Netherlands) decides to suspend the procedure to raise several preliminary questions to the CJ on the interpretation of the reason for refusal outlined.
First, the CJ analyzes whether the cause for refusal provided for in art. 3(1)(e) first indent (the form imposed by the nature of the product itself), can only be applied to a sign exclusively composed of the shape indispensable for the function of the product, or equally to a shape that covers one or more essential use characteristics of that product or to the generic functions of the same. The TJ opts for this second interpretation of the precept. For the CJ, the first interpretative option would not leave the relevant producer any room for essential personal input nor would it allow the cause of refusal at hand to fully achieve its objective.
Second, the CJ analyzes whether the prohibition relating to crafts that gives substantial value to the product, can be applied to a sign consisting exclusively of the shape of a product that has several characteristics that can confer different substantial values on it. The CJ answers this question in the affirmative. The CJ points out that this prohibition cannot be limited only to the form of products that have exclusively ornamental value. This prohibition also covers or would cover products that, in addition to the artistic element, have other characteristics that give them relevant value (e.g., in terms of safety, comfort, quality, etc.). In this regard, the CJ adds that the perception of the sign by the relevant consumer is not or would be a decisive element but rather an additional element of assessment when evaluating the applicability of this cause of refusal.
Thirdly, the CJ establishes that The causes of denial of trademark registration provided for in art. 3(1)(e) are autonomous and cannot be applied in combination with each other.
This ruling is important and should be welcomed because it clarifies with good judgment the legal parameters applicable to the registration of three-dimensional trademarks.
