Looking into how trade marks can protect 3D shapes
Parenthood brings many proud and memorable moments, not least the joy of being able to get your old Lego out of the loft and start playing with it again. Throughout its 80-year history, the Lego Group has proved adept at exploiting intellectual property rights to protect its slice of the market (annual sales of toys in the UK alone topped £3 billion in 2014). One of Lego’s numerous registered rights is EU Trade Mark 000050518 (an extremely early EUTM, having been registered in 1996) for the shape of a Lego ‘minifig’:
This EUTM was challenged by Best-Lock which makes similar (and allegedly interchangeable) bricks and figures. The challenge was on several technical grounds including:
– the EUTM is for a shape which results from the nature of the goods themselves (i.e. you can’t look to get trade mark rights over the natural shapes of things)
– the EUTM is for a shape which is necessary to obtain a ‘technical result’ (i.e. you can’t get trade mark rights over technical aspects of goods – that’s an issue for patents).
Best-lock didn’t produce any evidence to back up the first ground, which is a shame as it was probably the stronger of the two. As for the second ground, they pointed out that the EUTM images (above) include representations of the minifig’s hands, feet and backs of legs, all of which are designed to connect to other Lego pieces i.e. a technical result (curiously the usual stud on top of the minifig’s head is not shown).
But the Court drew a subtle distinction between the images (which define the trade mark but do not themselves clarify whether there is any technical function or what that function might be) and the goods the EUTM relates to (in the context of which the technical function becomes so clear that even children can understand the concept). In other words, ‘technical result’ must be assessed by looking at the trade mark itself, not by working backwards from how it is actually used in real life.
This result stands in contrast to Lego’s previous attempts to register the shape of their standard 4×2 studded brick – there the Court decided the brick represented nothing more than a technical shape, whereas it has accepted that minifigs have an independent function as a plaything in themselves even if you don’t connect them to other Lego pieces. Indeed, minifigs are widely traded and collected on their own merits with rare ‘figs being particularly sought after.
This case is also a reminder that ‘shape marks’ are a specialist subset of trade marks and, even though they’re subject to the same rules as all other trade marks, they need careful handling and legal consideration. Case dismissed! And not before time – we’ve got a Supervillain’s Secret Spaceport and Pig Farm to build (don’t ask…)