The General Court has dismissed an application for a declaration of invalidity in respect of a three-dimensional Community trade mark for a Lego man toy figure. The General Court held that the shape of Lego's toy figures was not necessary to obtain a technical result and upheld OHIM's decisions to register the shape of the Lego figures as Community trade marks.

Summary and Business Impact

Performing a technical function will be fatal to a shape trade mark – but only when all the essential characteristics of that trade mark perform that function and that function is demonstrated to the consumer by the graphical representation of the contested mark. Non-essential characteristics are to be ignored for the purpose of assessing technical function.

In this case, as a shape of a figure having a human appearance, the head, body, arms and legs constituted the essential characteristics of the mark, as they are necessary for the figure to have that appearance. However, they have no technical function. Any technical function attributable to other elements of the mark is not apparent from the graphical representation of the mark in question.

Article 7 of the Community Trade Mark Regulation (No 207/2009) sets out the absolute grounds for refusal and invalidity of signs as trade marks and provides (at Article 7(1)(e)) that signs cannot be registered as trade marks if they consist exclusively of:

  • a shape which results from the nature of the goods themselves;
  • a shape which is necessary to obtain a technical result;
  • a shape which gives substantial value to the goods.

This judgment follows the same approach as was shown to the equivalent Article 3(1)(e) of the Community Trade Mark Directive (2008/95/EC) by the CJEU in Tripp Trapp (Hauck v Stokke Case C-205/13), by which it sought to identify and assess each essential characteristic of the sign individually, rather than assessing the overall impression of the sign, in order to assess its shape. This makes applying these judgments to the assessment of shape marks difficult in practice – not least because even if a shape mark does not run contrary to one part of Article 7(1)(e) of the Regulation/Article 3(1)(e) of the Directive, it may well conflict with another.

As suggested by Advocate General Wathelet's Opinion last week in Kit Kat (Société des Produits Nestlé SA v Cadbury UK Ltd, Case C 215/14), where a mark has essential features that fall within more than one ground in Article 3(1)(e) of the Directive, registration will be precluded where any one of those essential features fully applies to the shape in question.

The General Court's Decision

In 2000, Lego Juris ("Lego") registered the following three-dimensional Community trade marks with the Office for Harmonisation in the Internal Market (‘OHIM’) in respect of, inter alia, games and playthings:

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Best-Lock, a competitor which uses similar figures, argued that the trade mark was invalid because:

  1. the shape of the figure was determined by the nature of the goods themselves, namely the possibility of joining the toy figure to other interlocking building blocks for play purposes; and
  2. the toy figure provided "technical solutions", namely being combined with other building blocks.

OHIM rejected Best-Lock's applications and Best-Lock applied to the General Court for annulment of OHIM's decisions.

The General Court upheld OHIM's decisions. In respect of the complaint that the shape of the figure is determined by the nature of the goods themselves, the applicant's failure to support their bare assertion led to the application being rejected as inadmissible.

Regarding the complaint that the trade marks consist exclusively of the shapes of goods necessary to obtain a technical result, the Court noted that the words "exclusively" and "necessary" indicated that the legislature took into account that any shape of goods is, to a certain extent, functional and that it would be inappropriate to refuse to register a shape of goods as a trade mark solely on the ground that it has functional characteristics.

This provision is to ensure that shapes of goods which only incorporate a technical solution, and whose registration as a trade mark would therefore impede the use that technical solution by others, are not to be registered. The Court noted that it should be borne in mind that this condition would be fulfilled when all the essential characteristics of a shape perform a technical function, the presence of non-essential characteristics with no technical function being irrelevant in that context. It is therefore necessary as a preliminary point to determine the essential characteristics of the contested trade mark, which correspond to the most important elements of that mark (See Lego Juris v OHIM, C-48/09 P, ECR, EU:C:2010:516, paragraphs 48, 51 and 69).

As a shape of a figure having a human appearance, the General Court held that the head, body, arms and legs which are necessary for the figure to have that appearance constitute the essential characteristics of the contested mark. None of these elements serve any technical function. In fact, the Court observed that "it appears that no technical result is connected to or entailed by the shape of those elements, which do not, in any event…, allow the figure to be joined to interlocking building blocks".

Further, the graphical representation of the hands of the figures in question, the protrusion on their heads and the holes under their feet and inside the backs of their legs do not, in and of themselves, demonstrate whether those components have any technical function (such as enabling them to be joined to other building blocks) and, if so, what that function is. In any event, those elements do not constitute an essential characteristic of the shape in question.

Finally, the Court found that none of the evidence permitted a finding that the shape of the figures in question was, as a whole, necessary to obtain a particular technical result, namely to enable the figures to be joined to interlocking building blocks. The ‘result’ of that shape is simply to confer human traits on those figures, and the fact that the figures in question represent characters and may be used by a child in an appropriate play context cannot be described as a ‘technical result’.

In practice, this means that an assessment of technical function and result must be done by reference to the graphical representation of the mark itself. A mark may not fall foul of the technical function exclusion where the mark itself does not enable the consumer to assess any potential technical function. Any external knowledge of the use of the mark should not be applied to the mark as it appears on the register.

The General Court therefore rejected the appeal and concluded that the characteristics of the shape of the figures in question are not necessary to obtain a technical result, upholding OHIM's decisions to register the shape of the Lego figures as Community trade marks.