ECJ draws a line around shape marks

European trademark law permits the registration of three-dimensional shapes as trademarks in cases where the shape of a product or its packaging operates as an indication of commercial origin. 'Shape marks' of this sort are subject to the same requirements as any other trademark in that they must be sufficiently distinctive to allow consumers to rely on the mark when distinguishing the goods of one business from those of another.

However, in addition to the usual trademark requirements, shape marks are also subject to three specific legislative provisions set out in Article 3(1)(e) of the First Trademarks Directive (89/104/EEC). These prevent the registration of a shape mark when it consists exclusively of:

"(i) the shape which results from the nature of the goods themselves; or

(ii) the shape of goods 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 (Case C-205/13, September 18 2014), the Court of Justice of the European Union (ECJ) was asked to turn its attention to these provisions. 

The case related to the well-known Tripp-Trapp high chair which is marketed by Stokke. In 1998 Stokke had secured a trademark registration in the Benelux for the shape of the chair:

Hauck later sought to challenge this right on the basis that it infringed the first and third criteria.

In relation to the first criterion, whether the shape results from "the nature of the goods themselves", the Benelux court asked the ECJ whether this provision was intended only to cover cases where the shape of the product was indispensable to its function or whether it could also cover cases where the shape had significant functional characteristics which may, but would not necessarily, feature in the goods of competitors.

The ECJ found that the obligation set out in the first criterion must extend beyond cases of shapes which are 'natural', such as fruits, or shapes which are determined by product regulations. These shapes are blocked from registration anyway since, by their nature, such shapes cannot be distinctive of a particular business. The obligation under 3(1)(e) must also extend to cases where the features of a product, although distinctive, are essential to the overall functionality of that product, even if a competing product could be made with alternative features.

This interpretation fills in a potential gap between the first criterion and the second, which addresses cases where a shape is necessary for technical result. Even where that technical result could be achieved using a different shape, the obligation under 3(1)(e)(i) may still prevent registration. The reasoning on this point is comparable to the approach taken in Community design law, where a design may be barred from registration if it is purely functional, even if alternative designs could also fulfil that function.

Turning to the third criterion, the question of whether the shape 'gives substantial value to the goods', the ECJ considered that it would be wrong to limit the effect of that provision to cases where the only characteristics of a shape which give it value are ornamental or artistic - for example, in the case of an item of jewellery. Instead, the provision can extend to shapes which have both functional and aesthetic characteristics, where those characteristics taken together are the primary source of value for the product.

Again, the ECJ is filling in the gap between the various provisions in Article 3(1)(e). While previously it may have been possible to argue that a shape escaped from the second provision on the grounds that it incorporated aesthetic features and from the third on the ground that it was also determined by functional considerations, this will now be more difficult.

However, it is important to set this finding against the essential consideration in Article 3(1)(e)(iii), which is that the overall shape is a primary driver of the value of the product. The ECJ also set out some factors to consider when assessing this point including: the artistic value of the shape, its dissimilarity from other shapes common on the market, whether there is a substantial price difference from similar products and whether the promotion strategy for the product seeks to accentuate its aesthetic features.

Overall, 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 and innovations that would usually be protected by time-limited rights such as patents or designs. However, the ECJ did point out that the provisions of Article 3(1)(e) apply only where a shape taken as a whole falls entirely within the scope of one of the provisions, considered independently of the others. It is not possible to argue that certain features of a shape are excluded by virtue of one provision while others fall foul of another.

While the judgment does provide some clarity on these less used provisions of European trademark law, it leaves open a fundamental difficulty. In many cases, a key contributing factor to the value of a product is the commercial origin of that product. It is well established that consumers often pay significantly more for products from a brand that they know (and that their friends know). So where the shape of a product has come to be understood by consumers as indicating a particular commercial origin for that product, this contributes to the value of the product. If trademark law is to do its job, it needs to ensure these consumers are able to make an informed choice and that the makers of such products can protect and build upon their goodwill. It is essential therefore that European trademark law leaves space for the registration of shapes which do indicate commercial origin in practice and ensures that the added value of this commercial recognition does not itself become an obstacle to protection.

Hastings Guise, Fieldfisher, London