It is fair to say that 3D trade mark registrations are still relatively rare in comparison to their more conventional 2D counterparts, and as such, the decision by the General Court of the European Union in the attack by Best-Lock (Europe) Ltd against the validity of the registration of the three dimensional shape of a Lego figure has been eagerly awaited. However the decision is somewhat lacking in substance; indeed it is more a lesson in the importance of selecting the correct grounds of attack – and being in the position to prove those grounds – than a lesson in the validity of the Lego registration.
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Best-Lock sought to invalidate the registration of CTM 000050518 (pictured above) under Article 7(1)(e)(i) of Community Trade Mark Regulation No. 207/2009 – that the registration consists of a sign which results from the nature of the goods themselves – and Article 7(1)(e)(ii) of the Regulation – that the registration consists exclusively of the shape of goods which is necessary to obtain a technical result. Best-Lock however, according to the General Court, summarily failed to adduce evidence – or even in some instances, suitable argument – to support these claims.
The General Court rejected the claim under Article 7(1)(e)(i) outright on the basis that Best-Lock merely asserted – but did not put forward any argument to support the assertion – that the trade mark consists of a shape determined by the nature of the goods themselves; nor did it provide any reasoning to show that the Board of Appeal’s findings in that regard were incorrect. We can only speculate therefore at the reasoning that the Court would have adopted on this ground – but it seems likely that given a toy figure can take many forms, the specific representation of a figure covered by the Lego registration is not determined by the nature of the goods themselves.
Turning to the decision under Article 7(1)(e)(ii), the Court stressed the importance of the words “exclusively” and “necessary” in that Article – it acknowledged that any shape of goods is, to a certain extent, functional, and that it would therefore be inappropriate to refuse to register a shape of goods as a trade mark solely on the ground that it has functional characteristics. Rather, Article 7(1)(e)(ii) is only fulfilled when all of the essential characteristics of a shape perform a technical function – all features of the sign, when put together, perform one technical function.
The Court determined that the essential features of the Lego registration that enable the figure to have a human appearance are the head, body, arms and legs, but held that none of the evidence filed established that those particular elements serve any technical function – indeed the Court went on to state that it appears no technical result is connected to or entailed by the shape of those elements. The Court held that Best-Lock had failed to establish what technical result a toy figure might be supposed to achieve beyond that of simply being a figure, and rejected the claims of Best-Lock that modularity was a technical result, as in contrast to a standard Lego brick – the subject of a separate successful invalidity attack – the toy figure represented by the contested trade mark was not modular, in so far as it could not be combined with as many other identical figures as desired.
Crucially, Best-Lock’s case fell apart with the Court’s accusatory comment that the graphical representation of the hands of the figure and the holes under its feet and backs of its legs do not,per se and a priori, enable it to be known whether those elements have any technical function, and if so, what that function is – the Court determined that without observation or experience, the functionality of those features cannot be inherently known, thereby defeating a trade mark invalidity action brought under this Article. Furthermore, even if the shape of those elements may have a technical function – that of enabling them to be joined to other elements – those features cannot be held to be the most important elements of the mark, given that they do not comprise the essential features of the registration.
Best-Lock seems to have based its invalidity action on information beyond the graphical representation of the mark, resulting in a fatal error in its invalidity attack, which by its very nature, is an attack on the inherent registrability of the actual sign as registered. Article 7(1)(e)(ii) is intended to prevent the registration of a sign which is comprised of features that solely perform a technical function – quite clearly the Lego figure does not fit this brief. Best-Lock has fallen into the trap of assuming that a 3D registration should be attacked on the grounds that it comprises a shape, whereas a 3D registration is simply a specific type of trade mark registration which must adhere to the same criteria as any other trade mark registration.
Perhaps an attack against the distinctiveness of the sign under Article 7(1)(b) would have been better placed – should a toy maker be entitled to prevent other toy makers from producing human figures in such a simplistic form? The recent Advocate General opinion in the KitKat chocolate bar shape application stipulates that mere recognition of a shape by the public is not sufficient to show that the trade mark is distinctive, it must act as a badge of trade origin. Does the Lego figure act as a badge of trade origin, or is it simply a recognisable piece in a multifaceted play set?
However, the question has to be asked whether the registration needs to be invalidated at all. The Court itself has determined that the essential features of the Lego figure are the head, body, arms and legs, but that the arguably more technical features – the shape of the hands and the holes under its feet and backs of legs – do not comprise essential features of the sign. How difficult would it be then to avoid infringement of this registration? It is possible that simple changes to certain anatomical elements of the figure might be sufficient to avoid a likelihood of confusion, and thus avoid trade mark infringement even where the more technical features are maintained. Has the Court therefore simply invited other traders to create interconnecting figures with certain different anatomical features which will ultimately avoid infringement? If this is the case, one wonders to what extent this decision will prove to be a victory at all.