By a decision of June 16, 2015, T-395/14 (full text here), the General Court of the EU (GC) knocked down a challenge by Best Lock Ltd, a British brand of plastic building bricks that are compatible with and competitor of the Danish firm Lego, arguing that the community 3D trade mark (TM) reproducing the shape of Lego’s famous figurines, registered in 2000, was invalid pursuant to Article 7(1)(e)(i) and (ii) of Regulation No 207/2009 (Reg.) because the shape of the little men was determined by the nature of the goods themselves and consists exclusively of a shape necessary to obtain a technical result, namely, the possibility of joining them to other interlocking building blocks for play purposes. The GC said that the contested TM does not consist “exclusively” of a functional shape. The “exclusivity” condition, according to ECJ’s previous case law (Lego Juris v OHIM, 14 September 2010, C-48/09 P, par. 51), is fulfilled only when all the shape’s essential characteristics perform a technical function. In the present case, however, the ability to join to other building blocks can not be considered the key elements of the Lego figures. Holes on the feet and backs of the legs “do not, per se, enable it to be known whether those components have any technical function” (par. 33), but rather are necessary in order “to confer human traits on the figure in question” (par. 35). Their function is therefore aesthetic and fully distinctive.
The GC decision is just the last episode of a judicial saga between the two companies started with a patent challenge in Germany in 2004 (BGH, 2 december 2004, I ZR 30/02), where Lego bricks were denied patent protection. After that, in a further case in 2010 (Lego Juris v OHIM, cited), the Canadian competitor Mega Bloks prevented Lego from registering its building brick also as a trademark. In case of defeat also in the present judgement, the Danish toy giant would be devoided of any IP protection for its creations. The GC, however, desregarded the ECJ’s previous findings on Lego bricks and concluded that the contested trade mark had nothing in common with the mark at issue in those proceedings, except for the fact that it was produced by the same company (para. 37). The Courts gives no other reasons for differentiating the two cases. Curiously, therefore, Lego will be able to sue only competitors producing and selling replicas of the little figures and not of the building bricks. Why is not completely clear, but rather confirms how the EU Courts findings in this complex area are always strongly facts based and a more thorough norms’ exegesis would be surely welcomed.
General Court of the European Union (Third Chamber), 16 June 2015, T-395/14, Best-Lock (Europe) Ltd v. OHIM
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[…] We already referred to a case concerning Lego, and, in particular, concerning Lego mini-figures and their possibility to be registered as shape marks (see here). […]