Lego manikin joins Rubik’s Cube
Lego figures are a toy for all. They develop not only the imagination, but also the line of European case law. Like Rubik’s Cube, they are reversing the tide of refusal to grant trademark protection to the shapes of products.
Best-Lock (Europe) Ltd v OHIM, cases T-395/14 and T-396/14 (judgments of the General Court of 16 June 2015)
The rights to Lego figures, a cult favourite for many, are controlled by the Danish company Lego Juris A/S. Based on an application by the company in 2000, the Office for Harmonisation in the Internal Market (OHIM) registered the shape of the figure as a three-dimensional Community trademark for goods including games and toys, under numbers CTM 50518 and CTM 50450.
Under Art. 7(1)(e) (i) and (ii) of the Community Trade Mark Regulation (207/2009), a sign that consists exclusively of a shape determined by the nature of the goods themselves or which consists exclusively of the shape of goods necessary to obtain a technical result may not be registered as a Community trademark. Relying on this provision, Best-Lock (also a toy manufacturer) applied in 2011 and 2012 for invalidation of the rights to the 3D figures. Best-Lock alleged that the shape of the figures in question is determined by the nature of the goods themselves and constituted a technical solution (so they could be combined with other building blocks). The competitor clearly wanted to limit the essentially endless protection of the figures as a trademark.
OHIM denied the applications to invalidate the rights to the marks, and Best-Lock applied to the General Court (the lower court of the Court of Justice of the European Union) for annulment of OHIM’s decisions. The court also denied Best-Lock’s applications, holding that the Lego figures could be registered as a trademark, and Best-Lock had not demonstrated that the findings of OHIM were incorrect in this respect. The justifications for the judgments (delivered by the same panel of judges in the two cases) differ somewhat, but the reasoning is similar.
The court found no basis for finding that the figure consists “exclusively” of the shape of the goods “necessary” to obtain a technical result. The court stressed that generally the shape of any good is to some degree functional, but that does not mean that it should be denied trademark protection. Registration could be denied only if the mark consisted “exclusively” of the shape of the good “necessary” to obtain a technical result. This condition is fulfilled when all the essential characteristics of a shape perform a technical function. The fact that certain of the parts of the figures here were movable was not a technical result. The figures were not modular, meaning that they could not be freely combined with other identical figures, and this also indicated that the figures have no technical result.
The court found that the features of the marks giving the figures a human appearance—head, body, arms and legs—constitute the essential characteristics of the marks, but these do not give rise to any technical result. The effect of the shape is simply to give it the human features of a manikin. That the figures might be connected to other items, such as Lego bricks—thanks to the open hands, the spaces in the bottom of the feet and the back of the legs (or the protrusion from the head of one of the figures)—was not a technical result of the item or of its shape and did not per se demonstrate a technical function. Even assuming, as Best-Lock claimed, that the shape of those elements may have a technical function—enabling them to be joined to other blocks—in the overall impression those elements were not the most important and were not essential to the shape of the figure.
As the court found, the overall impression of the shape as a whole was “simply to confer human traits on the figure in question, and the fact that the figure represents a character and may be used by a child in an appropriate play context is not a ‘technical result’.”
Best-Lock also claimed that none of the characteristics of the figures was the result of any creative design, but the court rejected this line of argument because it was irrelevant for purposes of this provision of the Community Trade Mark Regulation whether the shape resulted from a creative design.
The court referred to an earlier decision (Lego Juris v OHIM, Case T-270/06, judgment of 12 November 2008) in which the court held that a single red Lego brick could not be registered as a trademark. In the present case, OHIM had found that “the contested trade mark had nothing in common with the mark at issue in those proceedings except for the fact that it was a toy produced by the same company,” and the applicant did not present any evidence to the court to call that finding into question.
As an additional basis for its application to invalidate the mark, Best-Lock claimed that Lego Juris A/S had acted in bad faith when it filed for registration of the mark CTM-50518 (the figure lacking a protrusion on its head). The applicant had allegedly been using such a mark, while Lego had never used a figure without a protrusion on the head and was only seeking to eliminate unwanted competition. However, the court found that Best-Lock had not presented any evidence to support its claim of bad faith, or put forward any arguments to contest the specific findings by OHIM.
The court confirmed that the Lego figure could be registered as a Community trademark. The Lego figure thus joined another toy, Rubik’s Cube, whose graphic presentation, the General Court held, could also be registered as a trademark (Simba Toys GmbH & Co. KG v OHIM, Case T-450/09, judgment of 25 November 2014, discussed in the article “How does a Lego brick differ from Rubik’s Cube?”) Just as Rubik’s Cube differs significantly from other 3D puzzles available on the market, so the Lego figure with its characteristic human features differs from other figures on the market and is inseparably associated with the Lego company. The decision by the General Court on the Lego manikin marks a departure from the trend toward narrowing the scope of trademark protection. It is one more ruling upholding the principle that shape can serve a distinguishing function, particularly in the case of well-known goods.
Lena Marcinoska, Intellectual Property Practice, Wardyński & Partners
