In 2000, Lego Juris (Lego) registered the following three-dimensional Community Trade Marks for the famous yellow figure with the Office for Harmonisation of the Internal Market (OHIM) (the European equivalent of the Intellectual Property Office).
The European Community Trade Mark Regulations state that a sign which consists exclusively of the shape determined by the nature of the goods themselves or which consists exclusively of the shape of goods necessary to obtain a technical result may not be registered as a community trade mark. We learnt in the Capri Sun case earlier this month, that to have any hope of registration, the shape must contain elements which are distinctive. In other words, the shape must contain non-functional elements which lead consumers to recognise that the shape belongs to a particular product.
A competitor of Lego, Best-Lock which makes similar building blocks and figures, applied to OHIM for a declaration of invalidity in respect of these trade marks on the grounds that the shape and interlocking head of the yellow figure was needed for a technical result and secondly, it indicated the nature of the goods themselves. OHIM rejected Best-Lock’s application who subsequently applied to the General Court of the European Union (GCEU) to reverse OHIM’s decision.
The GCEU disagreed with Best-Lock and upheld OHIM’s decision to register the designs as a trade mark. It was decided that no technical result is connected to the shape of the figure, as the head, body, arms and legs do not allow the figure to be joined to interlocking building blocks. The GCEU said in a statement: “The ‘result’ of that shape is simply to confer human traits on those figures.” Best-Lock’s complaint that the figures represented the nature of the goods themselves was rejected, as they had failed to put forward any supporting arguments.
This is great news for Lego as the registration protects the distinctiveness of the little yellow figures, and prevents competitors from introducing confusingly similar figures into the toy market.