The Netherlands’ Tripp Trapp Chair Saga

Under the provisions of European trademark law, brand owners may apply to register a trademark that includes an aspect of the appearance of the goods themselves, including their shape. Yet granting the registration of product shapes comes with the risk of granting a monopoly in a type of product, or those features of the product which are instrumental to how it functions. As such, the use of trademarks to protect shapes of products continues to give rise to new case law. One case that stands out involves a well-known TRIPP TRAPP highchair (Tripp Trapp). Final judgment came from the Netherlands Supreme Court on July 3, 2020. With the final (Dutch) nail in the coffin of a case after 20 years of litigation, it is an opportune moment to reflect on this battle.

Background

Stokke A/S (Stokke), originally a Norwegian furniture manufacturer, has been marketing the Tripp Trapp, designed by Peter Opsvik, since 1972 (pictured below). Sales initially focused on Stokke’s Scandinavian home market. Since 1995, the Tripp Trapp has also been sold in the Netherlands.

The Tripp Trapp consists of sloping uprights in which all elements of the chair are incorporated, and of horizontal beams, whereby the combination of the uprights and the beams make an “L-shape.” The chair design has won praise and awards and has even been displayed in museums.

Benelux registration of the TRIPP TRAPP highchair

In May 1998, Stokke registered the appearance of the Tripp Trapp as a shape mark with the Benelux Trademark Office for “chairs, especially children’s chairs.” Benelux trademark registration no. 639972.

But Stokke was not alone in the market. The German company HAUCK GmbH & Co (Hauck) made, distributed, and sold two children’s chairs named “Alpha” and “Beta” in several countries, including Germany and the Netherlands. In Germany, in proceedings brought by Stokke against Hauck for copyright infringement of the Alpha chair, the Higher Regional Court of Hamburg held that German copyright law protected the Tripp Trapp and that the Alpha chair infringed that copyright.

Stokke (accompanied by the designer) also brought a legal action against Hauck before the Rechtbank’s-Gravenhage (District Court of The Hague), pleading infringement of its copyright in the chair as well as infringement of its registered Benelux shape mark. Stokke argued that the chair has its own original character which bears the personal stamp of the author and that sufficient copyrightable elements of the work are incorporated into Hauck’s Alpha and Beta chairs.

In the Dutch proceedings, the District Court of The Hague held that, similar to the proceedings in Germany, the Tripp Trapp is protected by copyright. However, it found that the scope of this copyright does not extend to the whole chair, but rather is limited to the non-functional elements. Only the side of the chair—the italic L-shape of uprights and beams—fell under copyright protection. The District Court of The Hague held that both the Alpha and Beta chairs fell within said scope of protection of the copyright of the Tripp Trapp, and Hauck was held liable for copyright infringement.

This left the claim of trademark infringement. Hauck argued that the shape of the Tripp Trapp chair does not lend itself to trademark registration. As a consequence, Hauck sought the annulment of Stokke’s Benelux trademark registration and was successful at first instance. The District Court of The Hague upheld the counterclaim and declared Stokke’s Benelux trademark invalid.

On appeal, the Gerechtshofte’s-Gravenhage (Court of Appeal of The Hague) confirmed the decision at first instance. On further appeal, the Hoge Raad der Nederlanden (Dutch Supreme Court), in a decision of April 12, 2013, referred questions to the Court of Justice of the European Union (CJEU). Thus, the legal battle in the Dutch courts led to the judgment of the CJEU (ECLI:EU:C:2014:2233). Following the judgment of the CJEU, the proceedings in cassation continued. The Supreme Court set aside the previous judgment of the Court of Appeal and referred the proceedings to the Court of Appeal of Amsterdam for further consideration and decision. The Court of Appeal of Amsterdam upheld the judgment of the District Court of The Hague confirming that the court was right to declare the Benelux trademark invalid. Stokke lodged appeal in cassation against the judgment of the Court of Appeal. Now, after 20 years, the case was ultimately settled last year by the Netherlands Supreme Court, having taken into account the CJEU judgment.

The path from the CJEU to the decision to the Dutch Supreme Court is set out below.

Preliminary Questions

The Dutch Supreme Court, on April 12, 2013, asked the CJEU for a preliminary ruling concerning the interpretation of the first and second indent of former Article 3(1)(e) of First Council Directive 89/104/EEC of December 21, 1988 to approximate the laws of the member states relating to trademarks (Trade Marks Directive).

On the basis of Article 3(1)(e) of the Trade Marks Directive, “signs which consist exclusively of:

(i) the shape, or another characteristic, which results from the nature of the goods themselves;
(ii) the shape, or another characteristic, of goods which is necessary to obtain a technical result;
(iii) the shape, or another characteristic, which gives substantial value to the goods;”

shall not be registered.

First Question

The first question from the Dutch Supreme Court asked whether the ground for refusal laid down in Article 3(1)(e)(i) of the Trade Marks Directive is (1) only present if it concerns a shape that is indispensable for the function of the product; or (2) already exists in the presence of one or more essential usage characteristics of a commodity that the consumer may be looking for in the goods of the competitors.

The CJEU interpreted this question as meaning that the referring court wanted to know whether the provision must be interpreted in such a way that the ground for refusal established therein (1) can only apply to a sign that consists exclusively of a shape that is indispensable for the function of the product; or (2) can also apply to a sign that consists exclusively of a shape in which one or more essential elements of use of these goods are present, which the consumer may be looking for in the goods of competitors.

First, the CJEU pointed to its consistent opinion that the provisions of Article 3(1)(e) of the Trade Marks Directive must be interpreted in the context of the public interest underlying the various grounds for refusal of registration listed in Article 3 of the Trade Marks Directive.

The CJEU considered, in accordance with the opinion of the Advocate General issued in the same proceedings, that each of the provisions in Article 3(1)(e) of the Trade Marks Directive pursues the same objective and had to be interpreted in a consistent matter accordingly.

On that note, the CJEU recalled its decision in the Koninklijke Philips Electronics NV v. Remington Consumer Products Ltd. (ECLI:EU:C:2001:52). There, it decided that the rationale of the second indent was to prevent trademark owners from gaining a monopoly over the technical solutions of a product’s functional characteristics which a user was likely to seek in the products of the competitors.

Also, in its Lego Juris v. OHIM decision (CJEU 14 September 2010, C-48/09 P, EU:C:2010:516), the CJEU considered that the purpose of the provisions of Articles 3(1)(e)(ii) and (iii) of the Trade Marks Directive was to prevent the indefinite exclusive (and durable) right that a trademark provides to the owner.

This led the CJEU to conclude that the ground for refusal as laid down in Article 3(1)(e)(i) of the Trade Marks Directive would not apply if another element of the shape of the goods, that is, a decorative element which is not inherent to the generic function of the goods, plays an important or essential role.

Against this background, in the Hauck v. Stokke case, the CJEU rejected the interpretation that this ground for refusal only applies to signs that consist solely of a shape that is indispensable to the function of the goods in question. The CJEU illustrated this by considering that such a restrictive interpretation would in fact lead to limiting that ground for refusal to so-called “natural” goods or to so-called “regulated” goods (the shape which is prescribed by standards), which had no substitute. It would in fact prevent the producers of goods to make a personal essential contribution to the product.

In answering the first question posed by the Dutch Supreme Court, the CJEU held that Article 3(1)(e)(i) of the Trade Marks Directive must be interpreted as meaning that “the ground for refusal of registration set out in that provision may apply to a sign which consists exclusively of the shape of a product with one or more essential characteristics which are inherent to the generic function or functions of that product and which consumers may be looking for in the products of competitors.”

Second Question

In its second question, the Dutch Supreme Court asked whether Article 3(1)(e)(iii) of the Trademarks Directive is to be interpreted as meaning that the ground for refusal of registration laid down in that provision may apply to a sign consisting exclusively of the shape of a product with different characteristics which may give the product different essential values. It also asked whether this assessment should take into account the way in which the target audience perceives the shape of the product.

The CJEU noted that the referring court had doubts about the interpretation of the provision. Those doubts originated from the fact that the Dutch Supreme Court considered that the shape of the Tripp Trapp gives the chair considerable aesthetic value while, at the same time, it has other characteristics relating to safety, comfort, and reliability. As a consequence, the Dutch Supreme Court thought that the shape gave the goods in question essential value for their function.

In this regard, the CJEU considered that Article 3(1)(e)(iii) of the Trade Marks Directive is applicable to the shape of products where the shape also performs essential functions, along with its aesthetic function. Otherwise, products with essential functional characteristics alongside a significant aesthetic element are not covered.

Furthermore, the CJEU considered that the presumed perception of the sign by the average consumer is not decisive for the purpose of the ground for refusal in Article 3(1)(e)(iii) of the Trademarks Directive. It can at most be a useful element of assessment when the essential characteristics are to be considered (see to that extent also the CJEU’s Lego Juris decision).

As the Advocate General pointed out in the same proceedings, other elements of assessment may be taken into account, such as the nature of the category of goods in question, the artistic value of the shape in question, its dissimilarity from other shapes in common use on the market concerned, a substantial price difference in relation to similar products, and the development of promotional strategy which focuses on accentuating the aesthetic characteristics of the products in question.

The CJEU answered the second question referred to by the Dutch Supreme Court by holding that the ground of refusal in Article 3(1)(e)(iii) of the Trade Marks Directive must be interpreted as meaning that it may apply to a sign consisting exclusively of the shape of a product with different characteristics which may give the product different essential values. The perception of the shape of the goods is only one of the elements in assessing whether this ground for refusal applies.

Third Question

The third question was whether the provisions of Articles 3(1)(e)(i) and (iii) of the Trademarks Directive can be applied in combination. Following the conclusion of the Advocate General and because the three provisions of Article 3(1)(e) are set out consecutively, coupled with the use of the word “exclusively,” the CJEU concluded that the sign cannot be registered if only one provision applies.

The Outcome

Following the CJEU judgment, the case came back to the Dutch Supreme Court. It ordered the Court of Appeal (Gerechtshof Amsterdam) to re-examine whether the shape of the Tripp Trapp did (or did not) qualify for trademark protection on the basis of both Articles 3(1)(e)(i) and (iii) of the Trade Marks Directive, or exclusively on the basis of one of these provisions.

The Court of Appeal decided on February 5, 2019, that the shape of the Tripp Trapp meets the criteria for the ground of refusal in Article 3(1)(e)(i) of the Trade Marks Directive. The court considered that the creative elements are also the elements of the design, which determine to a large extent the usage characteristics, and which make the chair suitable for its function as a highchair. First, the court considered that Stokke endorses the fact that the consumer attaches particular value to the functional use of the Tripp Trapp, and therefore likely looks for the shape of the chair that creates the functionality in the goods of competitors.

Second, following the considerations of the CJEU, the application of the ground for exclusion “nature of the product” is not limited to shapes that are indispensable for the function of the product. Rather, it already applies if the essential characteristics of a shape are inherently the generic function(s) of the commodity, so that there is still room for an essential personal contribution of the producer concerned. On this basis, the court concluded that Stokke’s shape mark is null and void.

The Dutch Supreme Court rejected Stokke’s final appeal against the judgment of the Gerechtshof Amsterdam on July 3, 2020. With this judgment, the Supreme Court brings an end to the long legal battle.

When it comes to the registration of a 3D shape as a trademark, the criteria for registrability are much more stringent, as can be seen from the “Tripp Trapp” case. Nevertheless, if the registration hurdles can be overcome, a 3D shape can be an extremely valuable asset for a brand owner. In general, applicants will have a better chance of registration the greater the degree that a shape constitutes a significant departure from the norms or customs of the sector.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

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