Lego defeats competitor challenge

13 July 2015

Last month, the European Court of Justice’s General Court ruled that the 3D shape of Lego’s toy figurine is a validly registered trade mark, defeating a challenge by a UK competitor to cancel the registration. 

Lego 1

Lego 2

The challenger, Best Lock, had argued that the shape of Lego’s figure should not have been protected, as this is determined only by the nature of the product as part of a toy system containing interlocking building blocks and, as such, contains only features that produce a technical result.

Dismissing these arguments, the Court found that the technical aspects, particularly the holes in the back of the legs and other interlocking parts of the shape, did not constitute the essential features of the mark. Rather, the head, body, arms and legs constituted the essential features of the mark. The ‘result’ of these features is simply to confer human traits on the figure, rather than to achieve any technical result, and the fact that the figure may be used by a child in a play situation is also not a technical result.

This ruling contrasts with an earlier European judgment against Lego, in which it saw a trade mark registration for the shape of a Lego brick (see below) cancelled on the basis “all of the shape characteristics, i.e. the basic shape, the arrangement of the eight studs and the relationship between them (height, width)” were necessary to achieve a technical result in the form of a connecting mechanism.

Lego 3

As well as bringing further clarity to this area of law by highlighting that a shape trade mark with only incidental technical components is not excluded from protection on the grounds that the mark produces a technical result, the judgment is likely to draw further attention to the increasingly hot topic of brand protection for three-dimensional shapes, following recent publicity surrounding trade mark protection for the shape of a KitKat, on which a final judgment from Europe’s highest court is still awaited.

Michael Conway

Michael Conway

Associate Partner

Our Expert
Michael Conway
Michael Conway
Location: Bristol (UK)

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