On 18 September 2014, the Court of Justice of the European Union ("ECJ") handed down a judgment on a reference for a preliminary ruling from the Dutch Supreme Court in the case of Hauck GmbH & Co. KG ("Hauck") v. Stokke A/S and others ("Stokke") (Case C-205/13). The case involves the interpretation of Article 3(1)(e) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, which has been repealed and re-enacted by Directive 2008/95 ("Trade Marks Directive").
Since 1972, Stokke has marketed on the Scandinavian market a children's chair called the 'Tripp Trapp'. Since 1995 it has also commercialised its product on the Dutch market. Stokke registered the form of the 'Tripp Trapp' chair as a three-dimensional trade mark at the Benelux Office for Intellectual Property.
Hauck, on the other hand, is a German company which manufactures, distributes and sells children's articles, including two chairs marketed as 'Alpha' and 'Beta'.
The parties have been involved in various proceedings in different countries. The procedure before the ECJ started with Stokke bringing an action before the District Court of The Hague in which it claimed that Hauck's 'Alpha' and 'Beta' chairs infringed the copyright in, and the trade mark on, the 'Tripp Trapp' chair. In its defence, Hauck brought a counterclaim seeking the declaration that the Benelux trade mark for the 'Tripp Trapp' chair held by Stokke was invalid. In 2000, the District Court of The Hague held that Hauck had infringed the copyright of the 'Tripp Trapp' chair. At the same time, it also held that the three-dimensional trade mark is invalid. The Court of Appeal of The Hague upheld this decision. It decided that the attractive appearance of the 'Tripp Trapp' chair gave that product substantial value but that its shape was determined by the very nature of the product (i.e., a safe, comfortable, reliable children's chair).
On further appeal, the Dutch Supreme Court made a preliminary reference to the ECJ regarding the interpretation of the first and third indents of Article 3(1)(e) of the Trade Marks Directive. This provision denies trade mark protection to signs which consist exclusively of: (i) the shape which results from the nature of the goods themselves; (ii) the shape of goods which is necessary to obtain a technical result; (iii) the shape which gives substantial value to the goods.
In its preliminary ruling, the ECJ held, first, that the first indent of Article 3(1)(e) of the Trade Marks Directive must be interpreted as meaning that the ground for refusal of registration may apply to a sign which consists exclusively of the shape of a product with one or more essential characteristics that are inherent to the generic function or functions of that product and which consumers may also be looking for in the products of competitors. The ECJ added that the ground for refusal of registration set out in the first indent of Article 3(1)(e) of the Trade Marks Directive pursues the same objective as the grounds set out in the second and third indents and must therefore be interpreted in a way that is consistent with the aims of the other two indents.
On this basis, the ECJ held that the referring court must identify the essential characteristics of the sign concerned on a case-by-case basis. This assessment either relies on the overall impression of the sign or on each component of the sign considered separately. In addition, the ECJ considered that when applying the first indent, account should also be taken of the fact that the concept of a "shape which results from the nature of the goods themselves" means that shapes with "essential characteristics which are inherent to the generic function or functions" of such goods must, in principle, be denied registration. Similar to the second and third indents of the same provision, the purpose of this requirement is thus to prevent the creation of a monopoly over an indispensable technical solution or function.
Second, the ECJ held that the third indent of Article 3(1)(e) of the Trade Marks Directive, which excludes signs the shape of which "gives substantial value to the goods", may apply to a sign which consists exclusively of the shape of a product and this shape has several characteristics each of which may give that product substantial value. The ECJ further pointed out that the concept of a 'shape which gives substantial value to the goods' should not be limited to the shape of products with only artistic or ornamental value but should extend to shapes that combine essential functional characteristics with a significant aesthetic element. Otherwise, these types of shapes could lend themselves to monopolisation. The ECJ added that the target public's perception of the shape of a product is only one of the potential assessment criteria.
Finally, the ECJ held that the grounds for refusal of registration set out in the first and third indents of Article 3(1)(e) must not be applied in combination. It specified that the three grounds for refusal of registration in the indents to Article 3(1)(e) of the Trade Marks Directive operate independently of one another. According to the ECJ, this is evidenced by the use of the word "exclusively" and the fact that the three grounds are set out as successive points. Therefore, it is only necessary to satisfy one of the indents in order to establish the invalidity of the registration.
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