OHIM BLOCKS LEGO REGISTRATION

Anna Carboni of Wilberforce Chambers has kindly provided the IPKat with a copy of the OHIM Cancellation Division’s decision invalidating Lego's registration of the shape of its Lego bricks as a Community trade mark. In doing so, the Cancellation Division applied the ECJ’s Philips v Remington decision, making a number of novel and/or interesting points, including:

* “There is no rule in Community trade mark law that bars anything that has been patented or could have been patented from CTM registration. Rather, the general principle is that one and the same product or item can be protected by various industrial property rights, provided that the conditions for each of those rights are fulfilled individually”.

* The Cancellation Division split the ground for the refusal of registration under Art.7(e)(ii) of Regulation 40/94 into 2 questions: (i) is the shape of the goods necessary to obtain a result? (ii) is the result that is obtained of a technical nature? The term “technical” for these purposes must be interpreted in the same way as it is interpreted in patent law, which cuts down on the risk of an overlap between patent and trade mark protection.

* Regarding the first question the Cancellation Division stated “The question is not whether the design of the item is functional, but whether the function of an item is actually performed by the shape [i.e. the shape for which registration is applied, rather than by some other feature of the product in question]”.

* Where a 3-D shape contains elements that are precluded from registration under Art.7(1)(e)(iii), such objections can only be overcome if the mark comprises other elements that are distinctive on their own.

* Acquired distinctiveness cannot overcome an objection under Art.7(1)(e) since the public interest protected by that article, which is to enable competitors to access the same technical solution has nothing to with distinctiveness. (The IPKat is somewhat puzzled by this point, because the need to keep certain marks free for other traders is said to be what is protected by Art.7(1)(c) (descriptiveness) yet there has been no suggestion that objections under that article cannot be overcome by acquired distinctiveness).

The IPKat notes that it is actually rather rare for Philips v Remington to be applied since many companies prefer to argue that functional shapes lack distinctiveness. The reason for this is often that proving that a mark is unregistrable under Art.7(1)(e) is tricky and technical, as this case demonstrates.

Naughty Lego here
Serious Lego here, here and here
Magical Lego here
Constructive Lego here and here
Lego that says “Ni” here

The IPKat says “You’re having too much fun looking at Lego sites, Ilanah”.