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Wednesday, 17 June 2015

Lego 3D manikin mark valid, says General Court

Case T‑395/14 Best-Lock (Europe) Ltd v OHIM, Lego Juris A/S is another of those intellectual property cases that hits the headlines on account of its subject matter rather than because of its intrinsic legal interest -- though it is by no means lacking in legal interest. It's a General Court of the European Union decision regarding the validity of a Lego Community trade mark that will be familiar to many readers who are children, have children or are movie buffs: the three-dimensional shape of a little Lego man.

The decision of the court has been conveniently summarised by a Curia press release, which reads like this (the bold black text is in the original; the red consists of Kat comments):
"The General Court upholds the registration of the shape of Lego figures as a Community trade mark

According to the Community Trade Mark Regulation, a sign which consists exclusively of the 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 trade mark.

In 2000, Lego Juris (‘Lego’) registered the following three-dimensional Community trade marks with the Office for Harmonisation in the Internal Market (‘OHIM’) in respect of, inter alia, games and playthings:

Katnote: the illustration above is the one that appears in the text of the decision available from the Curia website.  The press release also features a version that shows the little thingummy on the top of the man's head that interlocks with other Lego pieces
Best-Lock, a competitor which uses similar figures, applied for a declaration of invalidity in respect of those trade marks, on the grounds, first, that the shape of the goods in question is determined by the nature of the goods themselves (namely, the possibility of joining them to other interlocking building blocks for play purposes) [Article 7(1)(e)(i)] and, second, that the toy figures in question, both as a whole and in their particulars, provided technical solutions (namely, being combined with other building blocks) [Article 7(1)(e)(ii)]. OHIM rejected Best-Lock’s applications for a declaration of invalidity. Best-Lock therefore applied to the General Court of the European Union for annulment of OHIM’s decisions.

By today’s judgments, the General Court dismisses Best-Lock’s actions and thereby upholds the decisions to register the shape of Lego figures as a Community trade mark.

Regarding, first of all, the complaint that the shape of the goods in question is determined by the nature of the goods themselves, the General Court rejects that complaint as inadmissible in so far as Best-Lock has not put forward any argument to support that assertion and has not provided any reasoning to show that OHIM’s findings in that regard were incorrect. 
Cat Blog Friday, from Cube
Concerning the complaint that the shape of the goods in question is necessary to obtain a technical result, the General Court observes that it appears that no technical result is connected to or entailed by the shape of the essential characteristics of the figures (heads, bodies, arms and legs), as those characteristics do not, in any event, allow the figures to be joined to interlocking building blocks. In addition, the graphical representation of the hands of the figures in question, the protrusion on their heads and the holes under their feet and inside the backs of their legs do not, per se, enable it to be known whether those components have any technical function (such as enabling them to be joined to other components) and, if so, what that function is [this is the subtle point: the graphical representation, which defines the character of the mark, its registrability and its scope of protection, does not enable the consumer to know that the parts in question have any technical function -- even if that function may be known to the consumer by some other means]. Lastly, there is nothing to permit the inference that the shape of the figures in question is, as such and as a whole, necessary to enable the figures to be joined to interlocking building blocks: the ‘result’ of that shape is simply to confer human traits on those figures, it being understood that the fact that the figures in question represent characters and may be used by a child in an appropriate play context cannot be described as a ‘technical result’ [in other words, an assessment of 'technical result' must be made by looking at the mark itself, not by projecting such a result upon  mark by working backwards from the use that is actually made of it].

The General Court concludes from this that the characteristics of the shape of the figures in question are not necessary to obtain a technical result".
The IPKat thinks that this decision, which affirms the decisions of the Cancellation Division and the Board of Appeal, must be a correct application of Articles 7(1)(e)(i) and 7(1)(e)(ii) of the Regulation.  Merpel observes that this appeal decision does not concern Article 7(1)(e)(iii), which provides an absolute bar to registration where a mark consists exclusively of a shape which gives substantial value to the goods. 


Anonymous said...

I presume that this judgement won't stop Best-Lock from producing their own versions, but may stop them from using their products on packaging etc. where it may be construed as use in a trade mark sense?

Anonymous said...

Surely there is some contrast to be made between this and the Kit-Kat judgement?

Aaron Wood said...

Nonny @ 1154 - exactly.. there's an article there!!

ps am I the only person who misread that as Lego mankini and thought it might be painful?

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