Can a chair be a trademark?
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
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.
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 judgment 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 shapes of products.