Can trademarks that themselves represent the product be protected? The Court of Justice of the EU handed down a decision on 18 September 2014 on the registered three-dimensional shape mark of the famous Tripp Trapp chair. This decision was given in the context of the ban on the registration of shape marks which result from the nature of the product or give substantial value to the product. Competitor Hauck challenged the shape mark of the Tripp Trapp chair on these grounds and demanded that it be declared invalid. Hauck argued that the appealing shape of the Tripp Trapp chair influences the substantial value of the product and that this shape is largely functional, so that it is determined by the nature of the product.

Nature of the product
In this exclusion of trademark protection for shapes – of, in this case, a chair – the Appeal Court said that the essential characteristics of the particular mark, i.e. the most important elements thereof, must be properly identified on a case-by-case basis, with this assessment being based either on the overall impression or on each element. If the shape ‘contains a decorative or imaginative element that is not inherent to the generic function of the product’ which is important or essential, this exclusion from protection does not apply. However, there is no protection for shapes whose essential characteristics are inherent to the ‘generic function or functions of the product’. The Appeal Court stated that if protection were indeed granted for such shapes, this would stand in the way of beneficial use of these products, which consumers may possibly look for in products of competitors.

Substantial value
The Supreme Court had doubts about the interpretation of the other grounds for exclusion for shape marks, specifically the shape that gives substantial value to the product. When is this the case? If someone were to buy this chair because it is attractive and practical in terms of design? The shape of the Tripp Trapp chair reportedly gives the chair significant aesthetic value, but at the same time also has other features relating to safety, comfort and soundness and which therefore give the product substantial value for its function.

The Appeal Court decided that a shape mark can also be excluded from protection ‘if the particular product also fulfils other essential functions in addition to its aesthetic function.’ Not only the shape of products that have artistic or decorative value, but also shapes that have essential functional characteristics in addition to an important aesthetic element can therefore be excluded from trademark protection. In other words, marks that exclusively consist of the shape of a product with different features which can give the product different substantial values can also be excluded from protection.

The public perception is not decisive in this, but it is a useful assessment element according to the Appeal Court, together with the nature of the particular product category, the artistic value of the particular shape, the difference between this shape and other shapes that are usually used on the particular market, the significant difference in price compared to similar products, or the development of an advertising strategy in which the emphasis is mainly put on the particular product’s aesthetic features.

By Joost Becker