Menu
×

Can a chair be a trademark? – new judgment

The issue of registering the shape of a product as a trademark has again come under scrutiny by the European Court of Justice (Judgment of 18 September 2014, Case C-205/13).

The product at issue is the well-known Tripp Trapp children’s chair designed by Peter Opsvik and first put on the market in 1972 – a durable classic that can be found in the home of many families. See http://www.stokke.com/no-no/hoystoler/tripp-trapp/1001.html

The shape of the chair is registered as a trademark in various countries and it has also been established that it is protected by copyright.

In connection with an infringement case in the Netherlands, the alleged infringer claimed that the Benelux trademark registration was invalid. The local court decided to refer questions to the European Court concerning interpretation of the EU trademarks directive. The directive prohibits registration of trademarks consisting exclusively of a shape that ‘gives the goods substantial value’ or ‘results from the nature of the goods themselves’.

WHAT DOES THE EUROPEAN COURT SAY?

In its judgment, the Court states that a ‘shape which results from the nature of the goods themselves’ means that shapes with essential characteristics which are inherent to the generic function of such goods must, in principle, be denied registration. Such characteristics should not be monopolized by a single undertaking. They are essential characteristics that consumers will be looking for in competing products that are intended to perform an identical or similar function.

The nature of the criteria regarding a ‘shape which gives substantial value to the goods’ has been considered unclear by practitioners. The Court points out that this concept cannot be limited purely to the shape of products with only artistic or ornamental value, as there is otherwise a risk that products which have essential functional characteristics as well as a significant aesthetic element will not be covered by the concept. In that case, a trademark proprietor would be able to obtain a monopoly on the essential characteristics of such products, which would be contrary to the purpose of the provision.

Several criteria may be taken into account when assessing the essential characteristics of a product shape. The presumed perception of the sign by the average consumer is one of them. Other criteria include the nature of the category of goods concerned, the artistic value of the shape in question, its dissimilarity from other shapes in common use on the market concerned, a substantial price difference in relation to similar products, and the development of a promotion strategy which focuses on accentuating the aesthetic characteristics of the product.

NOW WHAT?

Based on the judgment from the European Court, the national court in the Netherlands will have to decide whether the shape of the Tripp Trapp children’s chair can be a valid trademark.

The decision illustrates the delicate balance between the subject matter of trademark protection – which may be maintained permanently – and other forms of intellectual property, such as design or patent protection that can be maintained only for a certain period of time. The judgment will no doubt be referred to in future cases concerning trademark registration of a shape of a product.

Share This StoryShare on Google+Share on LinkedInShare on FacebookTweet about this on TwitterPin on Pinterest
No Practice have Found!
Lisbet Andersen
Attorney, Partner
  TEL  (+45) 7025 5770
  MOB  (+45) 4270 9005
  FAX  (+45) 7025 5771
  Email   lan@aumento.dk
Qualifications

Right of audience, The Danish Supreme Court 2012
Attorney at law 1997
Master of Laws 1994
Graduate Diploma in International Business 1990

Previous Experience

Head of Trademarks, Bech-Bruun 2007-2014
Attorney at law, Bech-Bruun 1998-2007
Attorney at law, Sandel Trademarks 1993-1998
Promotion coordinator, Novozymes A/S 1992-1993
Marketing manager, Gerstenbergs 1986-1992

Memberships

INTA – International Trademark Association
ECTA – European Communities Trade Mark Association
Member of the Danish Bar and Law Society

Affiliations

Member of the Danish Complaints Board for Domain Names Mentor for startups, CSE-Copenhagen School of Entrepreneurship at CBS (Copenhagen Business School)

Languages

English
German
Scandinavian languages

Formalities

CVR : 35945601

Insurance HDI Gerling, policy no. VAS1200861

Banks : Nordea


Terms of business
September 21, 2016
About Aumento
Aumento Law Firm is a team of effective young attorneys with experience from some of the biggest law firms in Denmark.
Contact us

Aumento Law Firm
Ny Østergade 3, 4th floor
1101 Copenhagen K

TEL: (+45) 7025 5770
FAX: (+45) 7025 5771
E-MAIL: mail@aumento.dk