The shape of Lego's figures is a protected trademark and therefore cannot be copied, an EU court has ruled.
Lego Juris A/S applied to register the three-dimensional mark below as a European Community trade mark (CTM) in 1996 and, after Lego had filed evidence showing that the mark had become distinctive to it through use, the mark proceeded to registration in 2000.
In 2011 Best-Lock (Europe) Ltd applied to have the class 28 goods (games and playthings) element of Lego’s CTM registration declared invalid. The bases of the invalidity claim were that: (1) the shape of the goods is determined by the nature of the goods themselves, namely, the possibility of joining them to other interlocking building block and (2) the toy figures provided technical solutions.
This invalidity application was rejected by the European Community Registry. Best-Lock then appealed this decision. The appeal was dismissed by the Registry’s Board of Appeal and Best-Lock again appealed this decision to the General Court of the Court of Justice of the European Union.
The General Court has now upheld the decision of the Board of Appeal’s finding that the law does not preclude protection of the shapes of goods as trade marks, as long as the shape is not determined by the nature of the goods. In this case, it was held that toys could be manufactured in any form.
The court also held that Best-Lock had failed to explain what technical solution the toy figures were supposed to provide. Although the holes in the Lego man’s feet and legs make it possible to join the figure to other building blocks, this was not apparent from the graphical representation. In any event, the Court found that the essential characteristics of the contested trade marks were not the holes in the legs and feet but rather “the head, body, arms and legs which are necessary in order for the figure to have [a human appearance]” and that “none of the evidence permits a finding that those particular elements of the shape in question serve any technical function”. Therefore, the shape of the Lego man was correctly registered as a trade mark.
This decision is in contrast to a 2010 decision by the same Court on an invalidity action against another Lego 3D trade mark registration. Back then the Court ruled that Lego’s red 3D brick should not have been registered as a trade mark. In that case, it was held that the red brick had also become distinctive through use. However, the brick was found incapable of registration as a trade mark as its essential characteristics (a brick with two rows of studs) were functional and the mark consisted exclusively of a shape which is necessary to obtain a technical result (namely, to connect it to other bricks). The fact that this technical result could also be achieved in other ways was irrelevant.
When assessing the registerability of a 3D mark consisting of the shape of a product, it is necessary to consider what the essential characteristics are. If these are not necessary to obtain a technical result, it may very well be possible to obtain a registration (even if the shape does, arguably, contain some functional elements).