Case C-205/13, Hauck – the evolving shape of trade mark law [judgment 2014, ECLI:EU:C:2014:2233]

For the purposes of the EU’s Trade Mark Directive 89/104/EEC, can a company register an adjustable high-chair for children as a three-dimensional trade mark when the chair’s shape is but the result of the nature of the goods?

Facts
Peter Opsvik is a Norwegian designer. The Tripp Trapp chair is one of his creations. Its design allows the chair’s shape to accommodate a baby’s growth into childhood. The Tripp Trapp chair has won prizes. It is even a museum piece.

The Tripp Trapp chair has been made by a company belonging to the Stokke group of companies. Stokke initially sold them on the Scandinavian market but from 1995 began selling them on the Dutch market through a company known as Stokke Nederland. Both the Stokke parent company, and its Dutch subsidiary, brought an action in the Dutch courts against Hauck GmbH.

Hauck is a German company. It makes, distributes and sells goods aimed at children. Its sales brochure depicted, among other items, two chairs which Hauck sold as ‘Alpha’ and ‘Beta’. Hauck’s products were imported into the Benelux (Belgium, Luxembourg and The Netherlands), in part by the wholesaler Jakotrade, which, in turn, sold them on to retailers in The Netherlands.

There have been attempts to use IP law to protect the Tripp Trapp chair. In 1998, Stokke applied to register the form of the Tripp Trapp chair as a trade mark at the Benelux Trade Mark Office. The application referred to a shape mark, ‘chairs, especially chairs for children’. And in 2001, there was a judgment from the Hamburg Oberlandesgericht, which held not only that the Tripp Trapp chair enjoyed protection under German copyright law but also that Hauck’s ‘Alpha’ chair was copyright infringing.

The current litigation kicked off in the Dutch courts when Stokke sought a judicial declaration that Hauck’s Alpha and Beta chairs infringed the copyright in, and trade marks on, the Tripp Trapp. Hauck’s defence was to counter-claim for a judicial declaration that copyright did not subsist in the Tripp Trapp chair so there was no infringement of copyright. Equally, it sought a judicial declaration that Stokke’s trade mark filing was invalid so that Stokke’s damages claim must also fail.

In 2000, The Hague District Court generally found for Stokke but not in relation to the trade mark. In its view, the shape mark was invalid. This was upheld by The Hague Court of Appeal.

At the Dutch Supreme Court
The Dutch Supreme Court opened its judgment by dealing with the aspects of copyright law raised in the litigation. However, when it came to the trade mark law claims and counter-claims raised by the parties, the Dutch Supreme Court was unsure how to interpret EU law.

The key Directive is the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L40/1), as codified by Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L299/25).

The relevant provision is Article 3, which states:

Grounds for refusal or invalidity
1. The following shall not be registered or, if registered, shall be liable to be declared invalid:
…
(e) signs which consist exclusively of:
(i) the shape which results from the nature of the goods themselves;
(ii) the shape of goods which is necessary to obtain a technical result;
(iii) the shape which gives substantial value to the goods;

The Dutch Supreme Court recalled that The Hague Court of Appeal had held that the exterior of the Tripp Trapp chair was attractive, or very attractive, and this gave the nature of the goods value. For the rest, the chair was the epitome of a safe, comfortable and reliable children’s chair, which in the view of The Hague Court of Appeal meant that the form of the chair was dictated by the nature of the goods, such that the mark was a sign that existed solely in a form which corresponded, in part, to Article 3(1)(e)(i), and for the rest fell within Article 3(1)(e)(iii). According to the Supreme Court, this part of The Hague Court of Appeal’s judgment gave rise to a question about the correct interpretation of Article 2(1)(2) of the Benelux IP Convention, and Article 3(1)(e) of Directive 89/104/EEC. The Supreme Court noted that the CJEU’s case law did not provide an answer to these issues.

Equally, the Court of Appeal was alleged to have erred when finding that the specific shape of the Tripp Trapp chair did not merely, (and thus not exclusively) flow from the nature of the good concerned given the many, unlimited possibilities to the shape of a child’s chair. A further alleged problem with the Court of Appeal’s judgment related to the phrase in Article 3(1)(e)(iii) of the Directive, namely, ‘a shape which gave a substantial value to the goods’. The particular problem was what to do when a part was related predominantly to its utility function, and the shape was not the primary reason for purchasing the product. Again, the Dutch Supreme Court noted that the case law of the CJEU provided no answer on this issue.

Questions Referred
According to the Curia website, the Dutch Supreme Court has asked:

1(a) Does the ground for refusal or invalidity in Article 3(1)(e)(i) of Directive 89/104/EEC, as codified in Directive 2008/95/EC,  namely that shape trade marks may not consist exclusively of a shape which results from the nature of the goods themselves, refer to a shape which is indispensable to the function of the goods, or can it also refer to the presence of one or more substantial functional characteristics of goods which consumers may possibly look for in the goods of competitors?
(b) If neither of those alternatives is correct, how should the provision then be interpreted?

2(a) Does the ground for refusal or invalidity in Article 3(1)(e)(iii) of Directive 89/104/EEC, as codified in Directive 2008/95/EC, namely, that (shape) trade marks may not consist exclusively of a shape which gives substantial value to the goods, refer to the motive (or motives) underlying the relevant public’s decision to purchase?
(b) Does a ‘shape which gives substantial value to the goods’ within the meaning of the aforementioned provision exist only if that shape must be considered to constitute the main or predominant value in comparison with other values (such as, in the case of high chairs for children, safety, comfort and reliability) or can it also exist if, in addition to that value, other values of the goods exist which are also to be considered substantial?
(c) For the purpose of answering Questions 2(a) and 2(b), is the opinion of the majority of the relevant public decisive, or may the court rule that the opinion of a portion of the public is sufficient in order to take the view that the value concerned is ‘substantial’ within the meaning of the aforementioned provision?
(d) If the latter option provides the answer to Question 2(c), what requirement should be imposed as to the size of the relevant portion of the public?

3. Should Article 3(1) of Directive 89/104/EEC, as codified in Directive 2008/95/EC, be interpreted as meaning that the ground for exclusion referred to in subparagraph (e) of that article also exists if the shape trade mark consists of a sign to which the content of sub-subparagraph (i) of subparagraph (e) applies, and which, for the rest, satisfies the contents of sub-subparagraph (iii) of subparagraph (e)?