In a rejection of two actions brought by an English toy company against LEGO Juris A/S, the General Court of the European Union (GC) recently ruled in matter of three-dimensional trademarks, acknowledging the (contested) validity of two three-dimensional trademarks representing the shape of the famous Danish yellow figures (cases T-396/14 and T-398/14).

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The British company opposed the registration of the trademarks at issue before the Office of Harmonization in the Internal Market (OHIM), which, however, rejected both the oppositions and the subsequent appeals. Thus, the company requested the GC annul the OHIM’s decisions, essentially proposing the same defences already explained in the previous proceedings. In particular, the applicant claimed that the LEGO trademarks would be invalid, inter alia, for two main grounds:

  • as consisting exclusively of the shape which results from the nature of the goods themselves, which excludes the possibility of their registration pursuant to Article 7(1)(e)(i) of Regulation No. 207/09; and
  • as consisting exclusively of the shape of goods necessary to obtain a specific technical result, which is not registrable pursuant to Article 7(1)(e)(ii) of Regulation No. 207/09.

The GC rejected both claims as unfounded. With regard to the first ground above, the Judges pointed out that the applicant had merely asserted that the shape of the two three-dimensional trademarks at issue would be determined exclusively by the nature of the product, without offering any explanation in support of this assertion.  Therefore, the claim was rejected as inadmissible.

In reference to the second ground of invalidity, the GC  first recalled that Article 7(1)(e)(i) states that “solely the shapes of goods which only incorporate a technical solution, and whose registration as a trademark would therefore actually impede the use of the technical solution by other undertakings” are not registrable as trademarks: on the contrary, “it would be inappropriate to refuse to register a shape of goods as a trademark solely on the ground that it has (also) functional characteristics”. Secondly, the GC observed that the applicant had not demonstrated that the essential characteristics of the shape protected by the contested trademarks offer a technical result: the highlighted circumstances by which (i) the three-dimensional trademark represents a manikin intending to be used in play activities, (ii) the product covered by the trademark has movable parts and (iii) every toy figure can be joined to other LEGO toys (thanks to the special holes under its feet) cannot be considered essential characteristics of the registered shapes; at the bare minimum they constitute “technical results” produced by these shapes.

The GC also considered irrelevant the applicant’s reference to the previous judgment in which, pursuant to Article 7(1)(e)(ii), the same GC confirmed the invalidity of the three-dimensional trademark representing the shape of LEGO bricks (case T-270/06). Indeed, the Judges asserted, it is plain that the human shape of the toy figure represented in the trademarks at issue has nothing in common with the highly “technical” shape of the invalid trademark being referenced, except for the fact that both shapes are related to toys produced by the same company.