Norwegian furniture manufacturer avoids non-use trap

Switzerland

In Stokke Gruppen AS v Trip Trap Denmark A/S (Case 4C.229/2003), the Swiss Federal Court has upheld the plaintiff's claim that the defendant's use of TRIP TRAP for furniture infringed its trademark rights. The court held that although the plaintiff had not made use of its registered TRIPP TRAPP design mark in Switzerland, it had rights in the unregistered word mark TRIPP TRAPP as a result of extensive use.

In 1979 Stokke Gruppen A/S, a Norwegian furniture manufacturer, applied for a Swiss design mark for a children's chair. The mark was made up of a side view of the chair and the words 'tripp trapp'. Stokke did not use the design mark in Switzerland during the 1990s. Instead, it simply used the words 'tripp trapp'.

Trip Trap Denmark A/S, a Danish manufacturer of furniture made from natural materials, started using the mark TRIP TRAP in Switzerland in 1996 for various types of garden furniture. Stokke brought trademark infringement proceedings against Trip Trap on the basis of its TRIPP TRAPP mark. In response, Trip Trap argued that it had a defence on the grounds of non-use because Stokke had not used the mark as registered for a significant period of time.

The Commercial Court of Aarau held that although Stokke had failed to use the design mark as registered, it had used the unregistered word mark TRIPP TRAPP to such an extent that it had become well known pursuant to Article 6bis of the Paris Convention for the Protection of Industrial Property. It therefore merited protection. Trip Trap appealed.

The Swiss Federal Court upheld the earlier decision. It agreed that Stokke had failed to use the mark as registered, noting that use of the word mark TRIPP TRAPP did not constitute use of the registered design mark. It stressed the fact that the design element of the mark was very distinctive and added something extra to the words 'tripp trapp'.

However, the court noted that between 1989 and 2000 Stokke had sold almost 200,000 TRIPP TRAPP chairs in Switzerland (meaning that one chair was bought for every four children born in Switzerland during that time). Stokke had also promoted the TRIPP TRAPP chair widely since 1980. Thus, the court concluded that the unregistered word mark TRIPP TRAPP was well known prior to 1996 (when Trip Trap first used its mark) and could claim protection under Article 6bis of the Paris Convention.

For discussion of a Norwegian case involving the same parties, see Part cancellation action TRIPPs up.

Lucas M David, Walder Wyss & Partners, Zurich

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