CLASS 99
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MONDAY, 17 JUNE 2013
Shape marks from A to Z (or L?) - the Stokke chair
Some time ago we covered a German copyright case concerning the famous Tripp-Trapp highchair made by Stokke (depicted left, top). The chair has a nice, striking side view which I think of as Z-shaped, though others call it an L-shape (and maybe it is, if you think in italics).
It was originally patented way back in 1972 (the patent is US4109961/DE2421259 if you are interested), and the patent has therefore lapsed long since expired, leaving Stokke to defend on the basis of various other intellectual property rights - a not unfamiliar story in Europe these days.
Clearly, the Stokke shape itself is not purely functional, and is bought for partly aesthetic, partly functional reasons, but where should the balance lie, when a design has initially been protected by patent but has acquired iconic status? And how broad should the protection be?
Stokke's various (often successful) actions so far were discussed at UNION's Amsterdam Round Table last year, and the presentation can be found by going to this tab and clicking on "Roundtable on Preventing and Combating Look-Alikes, Amsterdam, November 2012". There is some nice further background discussion of the Netherlands copyright cases by Professor Bernt Hugenholtz here.
Amongst other things, Stokke have some trade mark registrations to the chair shape (it is marketed without prominent branding on the product itself, although I am not sure about the packaging. One of these is being litigated in the Netherlands.
The alleged infringement is the Hauck chair (depicted right, below). Not a million miles different (ignore the straps and tray as the Stokke one comes with those too), but the side view looks much more like an A than a Z. There are therefore questions as to how far the scope of the Stokke rights should go; is the front view the most important? Take away the Z and do you just have a functional design? And so on.
We are therefore grateful to the ever-vigilant IPKat for steering us towards a recent ECJ reference from the Dutch Courts, dealing with some fairly fundamental issues for shape marks. Some background to the dispute is on the Nauta Dutilh website here.
The reference asks the following questions, of which for my money the most interesting one is 2(b) - what proportion of the value has to be down to the shape, and what proportion can be due to other factors - since almost all designs are bought for a combination of reasons.
1 (a) Does the ground for refusal or invalidity in Article 3(1)(e)(i) of ... Directive 2008/95, namely that shape 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 look for in the goods of competitors?
(b) If neither of those alternatives is correct, how should the provision then be interpreted?
2 (a) Does the ground for refusal or invalidity in Article 3(1)(e)(iii) of ... Directive 2008/95 namely, that (shape) trade marks may not consist exclusively of a shape which gives substantial value to the goods, refer to the motive (or motives) underlying the relevant public's decision to purchase?
(b) Does a 'shape which gives substantial value to the goods' within the meaning of the aforementioned provision exist only if that shape must be considered to constitute the main or predominant value in comparison with other values (such as, in the case of high chairs for children, safety, comfort and reliability) or can it also exist if, in addition to that value, other values of the goods exist which are also to be considered substantial?
(c) For the purpose of answering Questions 2(a) and 2(b), is the opinion of the majority of the relevant public decisive, or may the court rule that the opinion of a portion of the public is sufficient in order to take the view that the value concerned is 'substantial' within the meaning of the aforementioned provision?
(d) If the latter option provides the answer to Question 2(c), what requirement should be imposed as to the size of the relevant portion of the public?
3. Should Article 3(1) of ... Directive 2008/95 be interpreted as meaning that the ground for exclusion referred to in subparagraph (e) of that article also exists if the shape trade mark consists of a sign to which the content of sub-subparagraph (i) of subparagraph (e) applies, and which, for the rest, satisfies the contents of sub-subparagraph (iii) of subparagraph (e)?
The outcome will likely give some answers (clear or otherwise) as to the extent shape marks can be used to protect "design classics" in the EU. We will keep you posted. Posted by: David Musker @ 15.48
Tags: chair, CJEU reference, Furniture, shape mark, stokke, substantial value, tripp trapp,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA456
Shape marks from A to Z (or L?) - the Stokke chair
It was originally patented way back in 1972 (the patent is US4109961/DE2421259 if you are interested), and the patent has therefore lapsed long since expired, leaving Stokke to defend on the basis of various other intellectual property rights - a not unfamiliar story in Europe these days.
Clearly, the Stokke shape itself is not purely functional, and is bought for partly aesthetic, partly functional reasons, but where should the balance lie, when a design has initially been protected by patent but has acquired iconic status? And how broad should the protection be?
Amongst other things, Stokke have some trade mark registrations to the chair shape (it is marketed without prominent branding on the product itself, although I am not sure about the packaging. One of these is being litigated in the Netherlands.
The alleged infringement is the Hauck chair (depicted right, below). Not a million miles different (ignore the straps and tray as the Stokke one comes with those too), but the side view looks much more like an A than a Z. There are therefore questions as to how far the scope of the Stokke rights should go; is the front view the most important? Take away the Z and do you just have a functional design? And so on.
We are therefore grateful to the ever-vigilant IPKat for steering us towards a recent ECJ reference from the Dutch Courts, dealing with some fairly fundamental issues for shape marks. Some background to the dispute is on the Nauta Dutilh website here.
The reference asks the following questions, of which for my money the most interesting one is 2(b) - what proportion of the value has to be down to the shape, and what proportion can be due to other factors - since almost all designs are bought for a combination of reasons.
1 (a) Does the ground for refusal or invalidity in Article 3(1)(e)(i) of ... Directive 2008/95, namely that shape 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 look for in the goods of competitors?
(b) If neither of those alternatives is correct, how should the provision then be interpreted?
2 (a) Does the ground for refusal or invalidity in Article 3(1)(e)(iii) of ... Directive 2008/95 namely, that (shape) trade marks may not consist exclusively of a shape which gives substantial value to the goods, refer to the motive (or motives) underlying the relevant public's decision to purchase?
(b) Does a 'shape which gives substantial value to the goods' within the meaning of the aforementioned provision exist only if that shape must be considered to constitute the main or predominant value in comparison with other values (such as, in the case of high chairs for children, safety, comfort and reliability) or can it also exist if, in addition to that value, other values of the goods exist which are also to be considered substantial?
(c) For the purpose of answering Questions 2(a) and 2(b), is the opinion of the majority of the relevant public decisive, or may the court rule that the opinion of a portion of the public is sufficient in order to take the view that the value concerned is 'substantial' within the meaning of the aforementioned provision?
(d) If the latter option provides the answer to Question 2(c), what requirement should be imposed as to the size of the relevant portion of the public?
3. Should Article 3(1) of ... Directive 2008/95 be interpreted as meaning that the ground for exclusion referred to in subparagraph (e) of that article also exists if the shape trade mark consists of a sign to which the content of sub-subparagraph (i) of subparagraph (e) applies, and which, for the rest, satisfies the contents of sub-subparagraph (iii) of subparagraph (e)?
The outcome will likely give some answers (clear or otherwise) as to the extent shape marks can be used to protect "design classics" in the EU. We will keep you posted. Posted by: David Musker @ 15.48
Tags: chair, CJEU reference, Furniture, shape mark, stokke, substantial value, tripp trapp,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA456
MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.
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