Lego have successfully defended their Lego character trade mark in the European courts after a series of third party challenges.
Lego’s Community trade mark (CTM) relates to the shape of the well-known Lego “minifigure” in relation to “games and playthings; decorations for Christmas trees”:
The Legal Context
The shape of goods is potentially registrable as a CTM, provided that it meets the usual requirements for registration as a trade mark, in particular that it is distinctive. However, if the mark consists exclusively of the shape which results from the nature of the goods themselves, or the shape which is necessary to obtain a technical result, then the mark cannot be registered.
The Lego Brick
Lego struck precisely this problem several years ago when it registered the shape of its basic Lego brick as a Community trade mark. The registration was challenged on the basis that all the elements of the brick were essential to obtain the result of connecting one brick with another so as to allow multiple assembly and disassembly. This included the knobs, tubes, wall thickness and the hollow skirt. In particular, the stability and versatility of the interlocking mechanism was a “technical result”. The CTM registration for the brick was therefore revoked.
However, in that earlier case, the European Court of Justice provided some useful guidance, which ultimately helped Lego this time around. The Court said that, for a shape to be barred from registration, all of the elements of that shape, and therefore the shape as a whole, must be necessary to obtain the technical result. It is not enough that the shape is merely functional (after all, the shape of all goods involve some kind of function – see, for example, last week’s Kit Kat case). Instead, the shape must produce a particular result, the shape must be crucial as to producing that result, and the result must be of a technical nature.
The Lego Minifigure
When Lego came before the Court this time, they were able to point to various features of the minifigure mark which did nothing to produce a technical result. In fact, the third party challenging the registration had failed to identify what technical result a toy figure might be supposed to achieve at all. The minifigure was not modular, at least not in the same way as the basic brick, and the knob on the top of the minifigure’s head or holes in its feet did not materially change this conclusion. The fact that the shape represents a “manikin” toy that may be played with was not itself a technical result. The mere fact that some parts of the minifigure are moveable was not a technical result, so long as the movement itself did not enable a result to be achieved. Ultimately, the Court found that the substance of the minifigure shape was formed by the head, body, arms and legs, and none of these were necessary to achieve any technical result.
The challenge was therefore rejected, and Lego’s minifigure CTM walks on confidently knowing it is protected as a CTM. In the meantime, the case serves as a useful reminder of the boundaries of trade mark protection in Europe and, for those seeking to protect distinctive shapes as trade marks, how far they can push those boundaries.
The question remains as to how broad the scope of protection for this registration really is. It should protect Lego against anyone from producing a toy manikin which is identical or very similar to the one depicted in the registration, but is unlikely to prevent competitors from producing their own toy manikins which are sufficiently different.