ECJ considers registrability of shape marks

In Hauck GmbH & Co KG v Stokke A/S (Case C-205/13), on a reference for a preliminary ruling by the Dutch Supreme Court, the Court of Justice of the European Union (ECJ) provided guidance on the registrability of shape marks under Article 3(1)(e) of the EU Trademarks Directive (89/104/EEC).

The underlying proceedings involved a challenge to a Benelux trademark registration for the shape of the Tripp Trapp highchair. The Dutch court sought guidance on the interpretation of the first and third indents of Article 3(1)(e), which provide that signs shall not be registered if they consist exclusively of:

• a shape which results from the nature of the goods themselves; or
• a shape which gives substantial value to the goods.

With regard to the first indent, the ECJ found that to interpret that criterion as applying only to signs which consist exclusively of shapes which are indispensable to the function of the goods would limit the products to which that ground for refusal could apply to ‘natural’ products and ‘regulated’ products, even though such signs could not be registered anyway because of their lack of distinctiveness. The ECJ added that, in principle, shapes with essential characteristics which are inherent to the generic function of such goods must also be denied registration. It notes that “reserving such characteristics to a single economic operator would make it difficult for competing undertakings to give their goods a shape… suited to the use for which those goods are intended”.

As to the third indent, it held that the effect of that provision “cannot be limited purely to the shape of products having 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”. Further, the ECJ stated that the target public’s perception of the shape of products is only one of the criteria which can be used to determine whether that ground for refusal is applicable.

Counsel comment:

The decision seeks to draw a tighter line around shape marks and prevent the trademark system from being used to gain longer-term protection for creations that would usually be protected by time-limited rights. However, it leaves open a fundamental difficulty. In many cases a key contributing factor to the value of a product is its commercial origin and consumers often pay significantly more for products from a brand they know. So where the shape of a product has come to be understood as indicating a particular commercial origin, this contributes to the value of the product. If trademark law is to do its job, it needs to ensure that consumers can make an informed choice and that the makers of such products can protect and build upon their goodwill. It is thus essential that EU trademark law leaves space for the registration of shapes which do indicate commercial origin.

Hastings Guise, partner at Fieldfisher