LEGO Block

Lego has lost its appeal to the European Court of Justice (ECJ). Yesterday, the ECJ upheld the General Court’s finding that the trade mark registration of the shape of a Lego brick was invalid.

Background

Lego sought to register the following (see image opposite):

Article 7(1)(e) (ii) of the Community Trade Mark Regulation states that signs which consist exclusively of the shape of goods which is necessary to obtain technical result shall not be registered. The policy reason for this is to prevent trade mark law permitting a potentially indefinite monopoly on technical solutions or functional characteristics of a product. Otherwise, a business could obtain protection of the shape as a trade mark once other intellectual property rights, such as patent protection, had expired.

ECJ findings

In deciding that the Lego brick consisted exclusively of a shape necessary to obtain a technical result, the ECJ found as follows:

• The condition that the sign must consist exclusively of the shape necessary to obtain technical result is fulfilled when all the essential characteristics of a shape perform a technical function. The presence of non-essential characteristics with no technical function will not undermine a finding of exclusivity. In this case, the most important element of the sign composed of the Lego brick consisted in the two rows of studs on the upper surface of the brick.
• The condition that the shape be necessary to obtain a technical result does not mean that the shape at issue must be the only one capable of obtaining that result. The fact that the same technical result may be achieved by another solution does not in itself mean that Article 7(1) (e) (ii) cannot be a ground for refusal.
• Article 7(1) (e) (ii) will not be a bar to registration where the application relates to a shape in which a non-functional element plays an important role, such as a decorative or imaginative element. The ECJ commented that in that case, competitor undertakings easily have access to alternative shapes with equivalent functionality, so that there is no risk that the availability of the technical solution will be impaired.In examining the functionality of a sign, the technical functionality of the characteristics of a shape may be assessed by taking account of the documents relating to previous patents describing the functional elements of the shape concerned. In this case, the two rows of studs on the Lego brick performed a technical function which was covered by Lego’s earlier patents.

Comment

This is the first ECJ case to consider Article 7(1) (e) (ii) since where registration was refused for graphic representation of the shape of the head of an electric razor. Following that 2002 case, shapes continue to be notoriously difficult to register as trade marks. This judgment does not make the process any easier. However, the ECJ gives us a little more guidance on which shapes may be registrable, suggesting that it may be possible to obtain a registration for a shape of a product where a non-functional element (such as decoration) plays an important role.

The judgment is a reminder that the Courts are sceptical of those who look to monopolise technical solutions indefinitely by way of trade mark protection. This is particularly the case where the person has previously enjoyed patent protection for the same solution, which in itself is clear evidence of its functional nature.

Lawyers Jason Rawkins, Lorna Caddy