The General Court (EU First Instance Court), with decisions of June 16, 2015, in the proceedings T-395/14 and 396/14, dismissed both actions filed by the UK company named Best-Lock (Europe) Ltd ("Best-Lock") seeking a declaration of invalidity of Community Trademarks no. 50518 and 50450, two three-dimensional trademarks depicted below and registered, inter alia, in class 28 of the Nice Agreement for "Games and playthings; decoration for Christmas trees" (the "Minifigures"), registered by Lego, the company known for its colourful interlocking plastic building blocks.
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Best-Lock acted claiming that the General Court should annul the previous decisions of the Office for Harmonisation in the Internal Market (OHIM) that rejected the application for a declaration of invalidity of the above trademarks.
In support of the two actions, Best-Lock alleged the infringement of Article 52(1)(a) of Regulation No. 207/2009 read in conjunction with article 7(1)(e)(i) and (ii) of the same regulation, according to which a Community trademark is to be declared invalid where it consists exclusively (i) of a shape determined by the nature of the goods themselves or (ii) of the shape of goods necessary to obtain a technical results.
The General Court, in the first place, found that Best-Lock has not put forward any argument to support that the shape of the Minifigures is determined by the nature of the goods themselves, namely, the possibility of joining them to other interlocking building blocks for play purpose.
In the second place, the General Court dismissed that the Minifigures consists 'exclusively' of the shape of goods which is necessary to obtain a technical result. In this regard, the General Court considered that the ground for invalidity of a trademark is fulfilled when all the essential characteristics of a shape perform a technical function. In the present case, it was found that the head, body, arms and legs, which are necessary in order for the Minifigure to have such appearance and constitute the essential characteristics of the contested trademarks, do not serve any technical function, namely to allow the figure to be joined to interlocking building blocks.
On these grounds the General Court stated on the validity of the Minifigures three-dimensional trademarks registered by Lego and dismissed the action filed by Best-Lock.
It is to be noted that, with the above decisions, the General Court took a different point of view from its previous decision regarding the Lego bricks, where it held that a shape of that kind could not be registered. In the Minifigures cases, in fact, the General Court concluded that the relevant trademarks had nothing in common with the Lego bricks except for the fact that they were toys produced by the same company.
Best-Lock appealed the above General Court's decisions related to the Minifigures and the matter will be now judged before the Court of Justice.