On June 16, 2015, Lego Juris A/S obtained two favorable decisions from the General Court of the European Union which will afford protection to famous Lego “minifigure” as a three-dimensional (3D) trademark; a protection that has been denied to its even more famous standard building brick.
For many years the Danish company, founded by Mr. Ole Kirk Christiansen, relied on patents that were filed at the end of the 1950s. However, the patents were invalidated in Canada in 1988 as a result of an action brought by a Canadian competitor, Mega Brands, Inc., and they expired in other countries in 2011.
With its patents expired or expiring, the company turned to trademark protection. On April 1st, 1996, Lego Juris applied to the European Office for Harmonization in the Internal Market (OHIM) to register its standard building brick as a 3D trademark. However, Mega Brands sought cancellation of the mark in relation to construction toys. After a prolonged legal battle, the Court of First Instance of the European Communities considered the various patents that had previously been filed, and found that the mark consisted exclusively of the shape of a product that was necessary to achieve a technical function, that is, the shape was intended to endow a simple toy brick with a robust and versatile interlocking mechanism.
In April and June 2000, Lego Juris tried again, and obtained from the OHIM registrations of two 3D minifigure marks (No. 50450 and 50518), showing the Lego figure seen from the front, side, back, top and beneath, namely for “games and playthings” in class 28. The two marks in question are identical except that the first one (granted in April) has a protrusion on its head and the second (granted in June) did not. Twelve years later, the validity of both trademarks was challenged by an English competitor, Best-Lock (Europe) Ltd. On June 16, 2015, the European authorities issued two separate but nearly identical decisions (T-395/14 and T-396/14) ruling that the marks were indeed valid.
General Court’s Decisions on Validity
Best-Lock claimed that Lego-Juris’ minifigure marks consisted “exclusively of: (i) the shape which results from the nature of the goods themselves; or (ii) the shape of goods which is necessary to obtain a technical result,” either of which would be grounds for invalidity in accordance with Article 3 of Community trademark Regulation No 207/2009.
As regards the first invalidity ground, whether the shape results from the nature of the goods, the Court held that the complaint was “inadmissible” (a word that sometimes signals an inadequate pleading by the lawyers) because the applicant failed to put forward any argument to support its assertion, or to show any error in the European Trademark Office Board of Appeal’s earlier rejection of the claim.
The Court also affirmed the Board of Appeal in rejecting on the merits the second invalidity argument, whether mark consisted exclusively of a shape that was necessary to obtain a technical result (i.e., whether it was functional). While the shape of goods often can be said to have a function, that does not mean it will always be functional in the trademark sense. The words “exclusively” and “necessary” are important qualifiers and were given full effect here. The Board of Appeal had found that the minifigures could not be combined with other identical minifigures (unlike Lego building bricks) and therefore modularity was not a technical result achieved by the 3D shape. The Board further found that other characteristics of the minifigure shape were achieving non-technical results, including:
- The manikin shape of the minifigure may be used by a child in the context of play, which is not a technical result;
- Certain parts (head, arms, legs) of the minifigure are moveable, but this movement did not achieve a technical result, such as getting from one place to another (this reasoning seemed odd to us; with all due respect, movement may be a way for adults to get from one place to another, but for children movement may be the result they seek to achieve with the toy);
- The figures included coupling elements to join it to other Lego pieces, such as holes under its feet, which might be considered a technical result. However, these holes were not among the essential characteristics of the trademark because the overall impression (the shape of a manikin) is maintained even if the holes under its feet are disregarded.
The two General Court decisions are almost identical, except in one respect. Best-Lock also argued that the June trademark application was filed in bad faith because, at the time, Lego Juris was already marketing the nearly identical minifigure (that is, the minifigure in the April application). But bad faith is usually difficult to prove, and here, the General Court found there was no supporting evidence.
In the New Regulation on the Community trademark currently under discussion, the validity requirements for 3D marks are to remain unchanged. Companies that seek to protect the shape of their goods as a trademark will therefore face the same obstacles and, if they overcome those obstacles, their marks will be protected for a potentially unlimited time period. Something worth fighting for.