Brand protection: CJEU's Tripp Trapp decision and its consequences

For more than 40 years, the Norwegian-Dutch Stokke-Group has been selling its famous Tripp Trapp chair. In the late 90s the shape of the chair was registered as a three-dimensional trade mark by the Benelux Office.

The German company Hauck GmbH & Co. has been selling chairs with a similar shape to the Tripp Trapp chairs. Stokke thus brought an action claiming that these chairs infringe Stokke’s copyright and trademark registration. In these infringement proceedings, Hauck brought a counterclaim seeking invalidation of the Tripp Trapp trademark registration.

The Dutch High Court (Hoge Raad der Nederlanden) asked the Court of Justice of the European Union (CJEU) for a preliminary ruling regarding the interpretation of Art. 3 (1)(e) of the trade mark directive 89/104/EEC which provides grounds for refusal or invalidation of signs.

According to this provision, signs that consist exclusively of the shape which results from the nature of the goods themselves shall not be registered as trademarks. In its decision of 18 September 2014, the CJEU held that this has to 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 which are inherent to the generic function or functions of that product and which consumers may be looking for in the products of competitors.

Further Art. 3 (1)(e) determines that such signs shall not be registered which consist exclusively of the shape that gives substantial value to the goods. The Court stated that this ground for refusal of registration may apply to signs that consist exclusively of the shape of a product with several characteristics, each of which may give that product substantial value. Hence the provision cannot be limited purely to the shape of products having only artistic or ornamental value. Thus, based on this interpretation by the Court, the trademark registration of the shape of the Tripp Trapp chair must be considered invalid.

However, for the time being, Stokke may still rely on copyright protection for the chair designed by Peter Opsvik.