Part cancellation action TRIPPs up

In Trip Trap Denmark A/S v Stokke Gruppen AS (LB-2003-00364/LB-2003-00365), the Court of Appeal has reversed a decision to partly cancel the registration of the mark TRIPP TRAPP for furniture. The court held that the registration should be maintained for all goods in relation to which it was registered, even though it was used only for some of them.

Stokke has been using the mark TRIPP TRAPP since 1973 for a popular children's chair designed by Peter Opsvik. Stokke registered the word mark TRIPP TRAPP for furniture, including chairs, in Class 20 of the Nice Classification. Trip Trap Denmark A/S, a manufacturer of wooden and natural material furniture, brought an action to cancel the registration in respect of goods other than chairs on the grounds that Stokke had not used the mark for furniture in general.

The District Court of Oslo ruled in Trip Trap Denmark's favour. Stokke appealed.

The Court of Appeal reversed the district court ruling. It made the following remarks:

• Neither case law nor legal theory put any restriction on limiting the specification of goods set out in a registration from a wider term (eg, 'furniture') to a narrower term (eg, 'chairs'). However, the court reasoned that limiting the specification to only certain types of goods under a class heading of the Nice Classification would be contrary to Section 25(a) of the Trademark Act, which states that a mark may be used for any of the goods in the class of the Nice Classification for which it was registered.
  
  
• The mark TRIPP TRAPP had been in genuine use in connection with chairs - a type of furniture. The term 'furniture' indicates a limited and quite similar group of goods.
  
  
• TRIPP TRAPP is a well-known mark and thus should be protected in relation to all the goods in relation to which it was registered.

Accordingly, the court found that the genuine use of the mark TRIPP TRAPP for chairs was sufficient to maintain the term 'furniture' in its specification of goods.

Felix Reimers and Marte Thorsby, Advokatfirmaet Grette DA, Oslo