The shape of any product cannot be registered as a trademark, the Court of Justice of the European Union recently affirmed. Shapes defined by the function of a product and shapes, which give substantial value to a product with several characteristics, cannot be registered as trademarks.

A trademark is a sign which serves to distinguish the goods and services of one enterprise from those of another. Words, logos, devices or other distinctive features which can be represented graphically can all be considered to be trademarks. The shape of goods, their packaging, sounds and smells may also classify as trademarks. However, EU law clearly states that the registration as a trademark of a shape which gives the goods in question substantial value or which results from the nature of the product itself is prohibited. This has been confirmed by the CJEU in a particular case which gave the Court the opportunity to clarify what is exactly prohibited or permitted insofar as the registration as a trademark of the shape of a product is concerned.

A company designed a children’s chair called Tripp Trapp which has a particular shape giving the product a high level of originality. This chair was put on the market in 1972 and in 1998 the company holding the intellectual rights filed an application with the Benelux Office for Intellectual Property for the registration of a three-dimensional trademark resembling the Tripp Trapp children’s chair.

The trademark was registered in the name of this company for “chairs, especially high chairs for children”.

Another German company which manufactures and distributes children’s articles came up with the design of two models of a children’s chair which it named Alpha and Beta. The Tripp Trapp company brought an action against the German company claiming that the latter’s sale of the Alpha and Beta chairs infringed their copyright and the rights deriving from the registered trademark. The German company made a counterclaim seeking a declaration that the trademark was invalid. The Dutch court seized of the case upheld the action brought by the Tripp Trapp company insofar as copyright is concerned but it also upheld the other company’s counterclaim seeking a declaration that the trademark registration held by the Tripp Trapp company was invalid.

Upon appeal, the Supreme Court of the Netherlands made a preliminary reference to the CJEU requesting guidance regarding the grounds for refusal or invalidity of the registration of a mark consisting of the shape of a product.

The CJEU observed that shapes with essential characteristics which are inherent to the generic function of the goods themselves cannot be registered as trademarks. It noted that reserving such characteristics to a single economic operator would make it difficult for competing undertakings to give their goods a shape suitable for the use for which the goods are intended.

The Court further affirmed that, with regards to the prohibition of registration as a trademark of shapes which give substantial value to the goods, such a concept cannot be limited purely to the shape of products having artistic or ornamental value. If this were to be the correct interpretation of the law, there would be a risk that products which have essential functional characteristics as well as a significant aesthetic element would not be covered by the prohibition found in the law.

Therefore, the registration as a trademark of the shape of a particular product may still be prohibited, when such a product in addition to its aesthetic function also performs other essential functions.

A number of criteria may be taken into consideration in coming to a decision as to whether the shape of such a product can be registered as a trademark. Such criteria may include the nature of the category of goods concerned, the artistic value of the shape in question, its dissimilarity from other shapes in common use on the market concerned, and a substantial price difference in relation to similar products and others.

The Court concluded that in deciding over the validity of a registered trademark or otherwise, national courts must bear in mind one important objective at all times: granting trademark exclusivity over the shape of a particular product to a single manufacturer cannot become tantamount to granting a monopoly over the essential characteristics of the product, to the detriment of competitors.

A trademark is definitely one of the most important assets of any company. However, the CJEU has also affirmed that trademark law cannot at any time serve as a means of stifling competition on any particular market and any attempt by any trademark owner to do so will be immediately shot down.

mariosa@vellacardona.com

Mariosa Vella Cardona is a freelance legal consultant specialising in European law, competition law, consumer law and intellectual property law.