IP & IT Law Bytes: Community trade mark: three-dimensional shape mark

04 August 2015

Audrey Horton

The EU General Court has held that two three-dimensional Community trade marks (CTMs) for Lego toy figures were validly registered.

Background

A sign shall not be registered as a trade mark if it consists exclusively of any of the following:

  • The shape which results from the nature of the goods themselves.
  • The shape of goods which is necessary to obtain a technical result.
  • The shape which gives substantial value to the goods (Article 7(1)(e), Community Trade Mark Regulation (207/2009/EC)) (CTM Regulation) (Article 7(1)(e)).

A sign consists exclusively of the shape of goods which is necessary to obtain a technical result when all the essential characteristics of a shape perform a technical function.

The European Court of Justice (ECJ) has held that a trade mark registration for the shape of a red three-dimensional 2 x 4 studded Lego brick for construction toys was invalid under Article 7(1)(e) (Lego Juris A/S v OHIM and Mega Brands, Inc).

Facts

L owned two three-dimensional CTMs for Lego toy figures that were registered for games, playthings and Christmas tree decorations. B applied for the CTMs to be declared invalid under Article 7(1)(e) on the grounds that the marks consisted exclusively of the shape which resulted from the nature of the goods themselves, and which was necessary to obtain a technical result.

The Office for Harmonization in the Internal Market (OHIM) Board of Appeal rejected B’s applications. B appealed.

Decision

The court dismissed the appeal. It held that L’s CTMs were validly registered.

No technical result was connected to the shape of the essential charcteristics of the toy mini-figures (heads, bodies, arms and legs) as those characteristics did not allow the figures to be joined to interlocking building blocks. The graphical representation of the hands of the figures, and the holes under their feet and in the backs of their legs did not in themselves give any indication as to any technical function of these elements.

Even assuming that these elements enabled the figures to be joined to interlocking building blocks, they could not be held to be the most important elements of the marks, nor had it been shown that the essential functional characteristics of the shapes of those elements were attributable to the claimed technical results.

The shape conferred human traits on the figures to represent characters for use in children’s play, and the characteristics of the shape of the figures were not necessary to obtain a technical result.

B’s complaints that the marks consisted of shapes determined by the nature of the goods themselves, and that the registration was made in bad faith, were also rejected.

Comment

Ironically, the ECJ’s decision in 2010 to reject L’s application to register the basic Lego brick provided support here for the registration of the Lego toy figures. In particular, the ECJ’s decision had confirmed that a sign cannot be refused registration as a trade mark if the shape of goods incorporates a major non-functional element, such as a decorative or imaginative element which plays an important role in the shape.

In that case, all of the essential characteristics of the shape would not perform the technical function of the goods in issue.

Case: Best-Lock (Europe) Ltd v OHIM, T-395/14 and T-396/14.

First published in the August 2015 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.

Authors