20 January, 2015

Tripping the Trapp - Trademarks in the Third Dimention

Trademarks can be an interesting novelty, especially when it comes to what is actually sought to be protected through trademarks. This ranges from trademarking the color of your football field to the phrase "Let's Get Ready to Rumble!", and only illustrates just how complex and varied trademarks can be, while offering a near perpetual right to protect what you have registered. With this kind of longevity, having a strong trademark, especially in an area where it could benefit you beyond just one product or product line, is incredibly valuable and desired by many (a lengthy legal battle over the color purple is a great example of just how much it can mean to a company). Most of the time though, trademarks are registered as one-dimensional items, which poses the question: could you register a three-dimensional trademark? The European Court of Justice aimed to answer this very question in the latter part of 2014, in a case anticipated by many.

The case in question was Hauck GmbH & Co. KG v Stokke A/S, in which the dispute centered around children's chairs. Peter Opsvik, a co-defendant in the case, had designed a children's chair called "Tripp Trapp", being sold under the Stokke brand since the early 1970s. The chair itself consisted of two L-shaped upright pieces, which contained slots, into which platforms and other pieces could be slotted into, forming the chair. The company sought to protect the highly-regarded chairs, and their look, by lodging a trademark application in 2003 (for example application 003514171). Hauck have also been involved with the production and sale of children's articles, including two chairs, Alpha and Beta. Hauck were subsequently taken to court for trademark infringement, due to the sale and manufacture of its Alpha chair in the German courts (with Stokke winning in the German courts), and also in the Netherlands, culminating in the ECJ some years later.

What the Court of Justice faced was a decision under Directive 89/104/EEC, which governs the registration of certain marks within the EU, as to whether the registered mark would be considered invalid under the Directive.

The first question posed to the Court sought to clarify "[d]oes the ground for refusal or invalidity in [the Directive], namely that [three-dimensional] trade marks may not consist exclusively of a shape which results from the nature of the goods themselves, refer to a shape which is indispensable to the function of the goods, or can it also refer to the presence of one or more substantial functional characteristics of goods which consumers may possibly looks for in the goods of competitors?" The question poses, in more simplistic terms, the conundrum of whether the grounds for refusal would encompass either a three-dimensional shape. which is indispensable to the function of the item and exclusively being only that shape, or would it include the functional shape of the item containing one or more parts that are integral to the function of that item, which consumers find desirable in that type of item.

The Court quickly clarified that, for a shape to be ineligible to be registered, due to the shape resulting from the nature of the goods themselves (Article 3), the shape has to be one which would unduly prevent competitors from using a similar shape, effectively giving a monopoly for similar items; or to put in better terms: "...[the Article's aim is to] prevent trade mark protection from granting its proprietor a monopoly on technical solutions or functional characteristics of a product which a user is likely to seek in the products of competitors".  This also applies to efforts in extending protection through trademarks to subject matters, which should be protected through other means (e.g. patents), or have been exhausted prior to the mark's registration. In the end, the Court poignantly answered the first question: "...[the] 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"; meaning a trademark cannot claim a monopoly on e.g. adjustable children's chairs, through registering that functional shape as a trademark.

Kids should not be placed on all traps.
The second question referred to the Court necessitated the assessment of whether a registered sign, consisting of several elements adding value to the product itself, much like the changeable pieces of the Tripp Trapp chair. Value does not, by itself, only mean aesthetic qualities, and the distinction between aesthetic and functional can often be blurry as well. The Court saw that the 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 several characteristics each of which may give that product substantial value. The target public’s perception of the shape of that product is only one of the assessment criteria which may be used to determine whether that ground for refusal is applicable". The public's perception of the mark is not the sole deciding factor, as was seen by the Court, but is one of a number of factors, such as ones described by the Attorney General: "...such as 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, a substantial price difference in relation to similar products, and the development of a promotion strategy which focuses on accentuating the aesthetic characteristics of the product in question". Whether a mark would be rejected as only adding substantial value to the item is a case-by-case assessment, with no clear deciding criteria as the only guidelines in this question.

Finally, the Court faced its third question, essentially asking whether a mark can be rejected based on a combination of the first and third indent in the Article (questions one and two, respectively, deal with the first and then the third indent). The Court put things bluntly, as, even from a prima facie assessment, the three indents are wholly separate from each other, and thus operate differently in each given argument. If a product fails over one indent, it will fail overall; an assessment based on the two other indents is wholly irrelevant past that point, and failing in more than one indent will not make the invalidity any more serious - the mark will fail either way. In the end the question of whether Stokke's mark will fail is up to the Dutch courts, as the answer has since been sent back for a final decision.

The Directive has been applied to domestic UK legislation, within the Trade Marks Act 1994, and thus is fully relevant within a UK scheme of things. In the United States the protection of three-dimensional marks falls under trade dress (defined in 15 USC 1127), and is more mailable than legislation applying purely to registered trademarks.

Overall the world of 3D marks is interesting, but a question filled with a lot of uncertainties. As the regime is not in place to protect patentable subject matter, or even registerable designs, the provisions serve as a protective means for items falling outside of those regimes. Whether a registrant would be successful depends largely on the mark for which protection is sought for, and is an assessment done on a case-by-case basis, with no clear bright line rules to follow.

Source: JDSupra

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