IP Information & News

The building blocks for trade mark protection

In 2000, Lego successfully registered a 3D CTM (community trade mark) for the Lego man for “Games and playthings; decorations for Christmas trees” in Class 28. In a four-year legal battle which saw UK competitor Best-Lock Construction trying to invalidate the trade mark, the General Court of the European Union has held that the LEGO man is a valid mark to remain on the register.

Best-Lock also produces very similar tiny figures, but which are priced significantly cheaper than their Danish rivals. However, due to LEGO’s trade marks, Best-Lock has been excluded from the European market and the decision given on 16 June 2015 further confirms that it will not be entering into the market in the future either.

In May 2012 Best-Lock applied for a declaration of invalidity of the contested trade mark in respect of the goods referred to, on the grounds that:

  1. The shape of the goods in question is determined by the nature of the goods themselves (the interlocking possibility of the figures with other toys under Art. 7(1)(e)(i)).
  2. The toy figures in question, both as a whole and in its particulars, provided technical solutions (being combined with other building blocks under Art. 7(1)(e)(ii)). After OHIM (Office for Harmonization in the Internal Market) rejected Best-Lock’s application for a declaration of invalidity, they appealed to the General Court (GC) to annul OHIM’s decision.

With regard to the first ground, the GC rejected the complaint because Best-Lock had not provided any argument to support the claim that the shape of the goods in question is determined by the nature of the goods themselves, nor had it shown why OHIM’s decision was wrong.

Addressing the second ground of complaint, that the shape of the goods in question is necessary to obtain a technical result, the GC recalled OHIM’s decision that Best-Lock had inter alia “neglected to mention what technical result a toy figure might be supposed to achieve”. Again, the GC pointed out that the applicant had not adduced any evidence to bring OHIM’s decision into question. As the claim must show that the essential characteristics of a shape perform a technical function, the GC looked at the essential characteristics of the Lego man. These are the necessary elements that give the figure a human appearance, such as the head, body, arms and legs. The GC held that “it appears that no technical result is connected to or entailed by the shape of those elements [sic] as those elements do not in any event allow the figures to be joined to interlocking building blocks”. “The result of the shape is simply to confer human traits on the figure in question” which, when played with by a child, “is not a technical result”.

The GC also gave direction regarding the graphical representation of the hands of the figure, the holes under its feet and behind the legs. The images do not per se enable it to be known whether those elements have any technical function. In view of the overall impression conveyed by the contested trade mark, these elements do not constitute essential characteristics of the shape in question and therefore do not perform an exclusively technical function.

The lesson to take away from this judgement is that a ‘technical result’ must be assessed in the context of the graphical representation of the mark itself, not by examining its everyday use, working backwards and projecting the possible result onto the graphical representation of the mark.

This case will be a welcome win for Lego which in 2010 lost an appeal to maintain its iconic registered Lego brick as a 3D CTM for ‘construction toys’ in class 28 because its shape was necessary to obtain a technical function under Art. 7(1)(e).

Even though Lego had once protected the shape via patents, these rights had expired a long time ago. As the ECJ (European Court of Justice) then stated, “technical solutions are capable of protection only for a limited period, so that subsequently they may be freely used by all economic operators”.

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