The European Court of Justice has given a preliminary ruling on questions relating to three-dimensional or “shape” trademarks forwarded to it by the Dutch courts.
For a number of years, Stokke A/S has marketed its ‘Tripp Trapp’ high chair in Holland and Scandinavia, the design of which is considered highly original and prized by Stokke. An application for a three-dimensional mark was made in 1998 in the Benelux IP Office.
Hauck GmbH introduced similar chairs to the market and was subsequently sued by Stokke for copyright and trademark infringement. It counterclaimed for a declaration of invalidity and the ECJ was asked for a preliminary ruling on:-
- the validity of a sign consisting exclusively of the shape which results from the nature of the goods; and
- the validity of a sign consisting of a shape that gives substantial value to the goods.
The European Court ruled that the grounds for refusal of shape marks could extend to shapes that are inherent to the generic function of a product and that the grounds for refusal relating to shapes giving substantial value to the goods could apply to products possessing several characteristics, where each characteristic could give the product substantial value. As such, the Dutch court could take both those grounds for refusal into account but must not apply them in combination. The case is now proceeding in the Dutch court.
It has been suggested that this decision draws a line between trademarks and registered designs and, as such, could have a significant impact on shape trademarks that have already been registered and any applications for shape marks in the future.
So don’t take a back seat on trademark registration; take specialist advice on how best to protect your intellectual property. Contact Tony Catterall, Head of Intellectual Property, on 01254 297900 or via email at firstname.lastname@example.org