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Registrability of shape marks

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09/10/2014

Shapes are capable of registration as a trade mark under the Trade Marks Directive [1]. However, under Article 3(1)(e) of the Directive, a sign cannot be registered if it consists exclusively of (i) the shape which results from the nature of the goods themselves; (ii) the shape which is necessary to obtain a technical result; or (iii) the shape which gives substantial value to the goods.

In Hauck GmbH & Co KG v Stokke A/S [2], the Dutch court referred questions relating to the refusal to register shape marks under Article 3(1)(e) of the Directive. The reference arose out of an application for a declaration of invalidity of the claimant’s TRIPP TRAPP trade mark, a Benelux mark, which consisted of the shape of a children’s chair. The applicant for invalidity had argued that the shape resulted from the nature of the chair itself (ground (i) above) and that it gave substantial value to the goods (ground (iii) above).

The Court of Justice of the European Union (the CJEU) ruled that:

  • the ground of refusal relating to shapes that result from the nature of the goods extends to signs that consist exclusively of the shape of a product, which includes essential characteristics inherent to the generic function or functions of the product and characteristics which consumers might look for in the products of competitors. In the opinion of the CJEU, “Reserving such characteristics to a single economic operator would make it difficult for competing undertakings to give their goods a shape which would be suited to the use for which those goods are intended”
  • the ground of refusal relating to shapes that give substantial value to the goods extends to signs that consist exclusively of the shape of a product with several characteristics, where each characteristic may give the product substantial value. The concept is not limited purely to the shape of products having only artistic or ornamental value. In other words, the ground relating to substantial value can cover shapes even if they have functional as well as aesthetic purpose
  • the three grounds of refusal in Article 3(1)(e) cannot be applied in combination. The grounds are to be applied independently of one another. Conversely, registration cannot be refused under Article 3(1)(e) unless at least one of the three grounds is fully applicable.

The validity of the trade mark will now be determined by the Dutch court in the light of the CJEU’s ruling.

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[1] 2008/95/EC
[2] Case C-205/13