Own-it | Intellectual Property Know-How for Creative Businesses

Lego hits brick wall

Lego hits brick wall

Published: 06.10.10 at 11:00

The European Court of Justice (ECJ) has rejected Lego's appeal against invalidation of their Community Trade Mark registration for the shape of their toy building brick.

Kirkbi (the predecessor of Lego Juris A/S) applied to register the shape of their modern style toy brick as a Community Trade Mark in 1996 for goods including 'games and playthings'. Their application successfully progressed to registration in 1999 after Kirkbi was able to persuade OHIM that the shape of their brick had acquired distinctive character in the European Union.

However, Ritvik Holdings Inc (maker of rival product Mega Bloks) promptly attacked the validity of Kirkbi's trade mark registration which in its view gave Lego an unfair monopoly right. Ritvik filed an application for a declaration of invalidity against their registration on the basis that the shape of Lego's brick was necessary to obtain a technical result and registration was therefore invalid. 
The ECJ agreed with Ritvik's arguments and stated that where all the essential characteristics of a shape perform a technical function such shape can not be registered as a trade mark. It added that the presence of one or more minor arbitrary elements are not sufficient to alter such conclusion. The ECJ also emphasised that it is irrelevant that other shapes could be developed to achieve the same technical function.

The decision is a significant victory for Mega Bloks. Lego meanwhile has no choice but to note the judgment of the Court and to seek alternative avenues for protection of its commercial interests.

The legal implications
IP specialist law firm Briffa comments: 'Lego's attempt to prolong it intellectual protection by any means available is not an uncommon one. Lego bricks were the subject of patents dating back to 1958 all of which have long expired. Securing trade marks would have significantly enhanced Lego's market position.  

'The Trade Marks Act 1994 introduced the possibility of registering the shape of goods or their packaging as a trade mark in the UK. However in order to be registerable such a trade mark must not consist exclusively of 1) the shape which results from the nature of the goods themselves 2) the shape of the goods which is necessary to achieve a technical result 3) the shape which gives substantial value to the goods.

'Though Lego was able to successfully gain a Community Trade Mark registration for the shape of its toy brick the registration was invalid on ground 2) above as some of the shape features of the Lego brick had a technical function. The case illustrates the balance that exists between the rights of owners and consumers who benefit from free competition in the market.'

Story by Brifa. Photo credit: ViZZZual.com


Please note that this article provides general information only but is not to be regarded as legal advice. You must take advice from a specialist lawyer in relation to your specific circumstances. Further, you should seek additional legal advice when dealing with parties based in other parts of the world or works originating from other parts of the world as the legal position may vary.


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