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Lego brick cannot be registered as a trade mark, rules ECJ

Out-Law News | 14 Sep 2010 | 9:41 am | 4 min. read

A Lego brick is a sign consisting exclusively of the shape of goods necessary to obtain a technical result, Europe's highest court ruled today. It is therefore ineligible for registration as a Community trade mark, it said.

Danish toy company Lego has been trying for 14 years to register its iconic building brick as an EU-wide trade mark. Today's ruling dismissed Lego's appeal against a ruling by the Court of First Instance in 2008.

Trade mark law provides that marks may consist of any signs capable of being represented graphically, such as words, designs, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. But signs which consist exclusively of the shape of goods which is necessary to obtain a technical result are not to be registered.

In 1996, Lego filed an application at OHIM (Office for Harmonisation in the Internal Market), the Community trade mark office, for registration as a Community trade mark of a red toy building brick.

OHIM initially registered the brick as a mark. However, rival brick builder Mega Brands succeeded in having the mark declared invalid by OHIM, on the ground that the Lego brick’s specific features were adopted to perform a utilitarian function, and not for identification purposes.

The most important element of the sign composed of the Lego brick is the two rows of studs on the upper surface of that brick, which are necessary to obtain the intended technical result of the product, that is to say, the assembly of toy bricks.

After the Grand Board of Appeal of OHIM upheld the declaration that the mark was invalid, Lego brought an action before the Court of First Instance against the decision.

In its judgment of 2008, the Court of First Instance ruled that European Union law precludes registration of any shape consisting exclusively, in its essential characteristics, of the shape of the goods which is technically causal of, and sufficient to obtain, the intended technical result, even if that result can be achieved by other shapes using the same or another technical solution.

Lego then brought an appeal before the Court of Justice of the EU (ECJ) against that judgment.

Today's ruling was not available at the time of writing but according to a press statement issued by the ECJ today, the Court has ruled that the main purpose of the prohibition on registration as a trade mark of any sign consisting of the shape of goods which is necessary to obtain a technical result is to prevent trade mark law granting an undertaking a monopoly on technical solutions or functional characteristics of a product.

Thus, companies may not use trade mark law in order to perpetuate, indefinitely, exclusive rights relating to technical solutions.

"When the shape of a product merely incorporates the technical solution developed by the manufacturer of that product and patented by it, protection of that shape as a trade mark once the patent has expired would considerably reduce the opportunity for other undertakings to use that technical solution," said the ECJ press statement. Technical solutions are capable of protection only for a limited period, so that subsequently they may be freely used by all economic operators, it said.

The ECJ also found that by restricting the prohibition on registration to signs which consist ‘exclusively’ of the shape of goods which is ‘necessary’ to obtain a technical result the legislature duly took into account that any shape of goods is, to a certain extent, functional and that it would therefore be inappropriate to refuse to register a shape of goods as a trade mark solely on the ground that it has functional characteristics.

"By the terms ‘exclusively’ and ‘necessary’, the legislature sought to ensure that solely shapes of goods which only incorporate a technical solution, and whose registration as a trade mark would actually impede the use of that technical solution by other undertakings, are not to be registered," said the statement.

As regards the fact that the ground for refusal covers any sign consisting ‘exclusively’ of the shape of goods which is necessary to obtain a technical result, the ECJ found that that condition is fulfilled when, as in the present case, all the essential characteristics of a shape perform a technical function, the presence of one or more minor arbitrary elements with no technical function being irrelevant in that context.

"As regards the condition that registration of a shape of goods as a trade mark may be refused only if the shape is ‘necessary’ to obtain the technical result intended, the Court finds that that condition does not mean that the shape at issue must be the only one capable of obtaining that result," said the ECJ statement. "In some cases, the same technical result may be achieved by various solutions."

"Thus, there may be alternative shapes, with other dimensions or another design, capable of achieving the same technical result," it said. "However, that fact does not in itself mean that registering the shape at issue as a trade mark would have no effect on the availability, to other economic operators, of the technical solution which it incorporates."

The court also said that the position of a company which has developed a technical solution cannot be protected – with regard to competitors placing on the market slavish copies of the product shape incorporating exactly the same solution – by conferring a monopoly on that undertaking through registering as a trade mark the three-dimensional sign consisting of that shape. But it can, where appropriate, be examined in the light of the rules on unfair competition, it said. Such an examination was deemed to be outside the scope of these proceedings.

Lego's appeal against the Court of First Instance's decision was dismissed.