Lego Man keeps his mark

A recent decision of the General Court of the EU, involving Lego, sheds light on the law relating to 3D trade marks.

Lego is undoubtedly one of the world’s best known children’s toys. It has comprehensive trade mark protection for the Lego name and branding, and for some Lego products. In Case T-395/14, Best-Lock (Europe) Ltd v OHIM, Lego Juris A/S, the General Court considered whether the “Lego Man” figure, pictured, should benefit from trade mark protection.

Background: 3D trade marks

Regulation (EC) No 207/2009 governs Community trade marks (“CTMs”). Article 4 provides: “A Community trade mark may consist of any signs capable of being represented graphically… including… the shape of goods or of their packaging”.

In principle, the shape of goods can be registered as a trade mark. The risk inherent in this is that companies use trade mark protection to obtain perpetual monopolies over goods manufactured to a certain shape, thus affording greater protection than could be obtained from a registered or unregistered design or a patent.

The regulation contains four safeguards against this. First, the shape of the goods can only be registered as a trade mark if it is capable of distinguishing the goods or services of one undertaking from those of others (article 4).

In addition, three specific types of shape cannot be registered (article 7(e)), specifically those consisting exclusively of:

• the shape which results from the nature of the goods themselves;
• the shape which is necessary to obtain a technical result; or
• the shape which gives substantial value to the goods.

In the present case, Best-Lock, a competitor of Lego, sought to have Lego’s 3D CTM for the Lego Man declared invalid. The only argument deemed admissible by the General Court was that the Lego Man CTM consisted exclusively of “the shape of goods which is necessary to obtain a technical result”. Best-Lock argued that the characteristics of the Lego Man’s shape were necessary to obtain the technical result of it being joined to other Lego bricks.

Essential characteristics

First, the court noted that the prohibition applied only to trade marks consisting exclusively of the shape of goods necessary to achieve a technical result. Case law had established that this condition is fulfilled when all the essential characteristics of a shape perform a technical function.

Here, the court decided the essential characteristics of the shape were the Lego Man’s head, body, arms and legs, all of which were necessary to give the figure a human appearance. There was no evidence to suggest any of these elements had a technical function.

The court acknowledged that the holes on the Lego Man’s feet and the back of its legs allowed it to be connected to Lego bricks. However, this was not apparent from the graphical representation of the trade mark. Consumers could not know the holes performed this function, just from looking at the trade mark.

In any event, the holes were not important elements of the trade mark. They did not constitute essential characteristics. Nor was there evidence to suggest that their shape was attributable to their claimed technical result.

Thus, the argument that the Lego Man trade mark consisted exclusively of a shape necessary to achieve a technical result was rejected, and the mark was upheld as valid.

Comment

The General Court’s decision is eminently sensible and logical. The Lego Man is an iconic and distinctive toy shape. At best, only the holes on its feet and the back of its legs perform any sort of technical function, and these features do not determine the rest of the Lego Man’s shape.

Further guidance on the law relating to shape trade marks is expected in the hotly-contested case of Société des Produits Nestlé SA v Cadbury UK Ltd (Case C-215/14), in which Cadbury has opposed Nestlé’s application to register the four-finger shape of a Kit-Kat biscuit as a trade mark. The CJEU is expected to rule later this summer on a number of questions referred to it by the English High Court, relating to the article 4 and 7 requirements, and this important decision will be addressed in a subsequent article.

It is vitally important that the courts interpret correctly the provisions relating to 3D shape marks, in order to balance the need to avoid inadvertently creating monopolies in goods which extend beyond existing IP protection for designs/innovations, with the need to properly protect aspects of companies’ branding which are distinctive specifically of them. The Lego case is very helpful, but the Nestlé case will really show us the shape of things to come.