As some readers may know, the 3D shape of the rectangular red Lego brick achieved registration as a Community Trade Mark back in October 1999. However only two days after registration had been achieved, one of Lego's competitors filed an application seeking to overturn the registration.

The grounds of the challenge relied principally on the claim that the shape of the Lego brick consisted exclusively of a shape which was necessary to obtain a technical result. This is one of the absolute grounds of refusal in relation to applications to register a 3D shape as a trade mark. In essence this ground of refusal prevents, for example, the registration of a propeller shape as a trade mark for marine propellers.

The action was stayed pending the result of the first case on shape marks to be decided by the European Court of Justice (the "ECJ"), which related to the well known 3-headed electric shaver manufactured by Phillips, known as the Philishave.

Since the Phillips case was decided in 2002, the dispute between Lego and its competitor, Mega Brands Inc, has been slowly working its way up to the ECJ.

Lego sought to argue that the absolute ground for refusal in relation to shapes which are necessary to obtain a technical result does not seek to prevent the registration of any shape which performs a technical function. Rather they argued that registration should only be refused if to allow it would create a monopoly on technical solutions or on functional characteristics. So, where there are several shapes which have an equivalent function, protecting one of those shapes as a trade mark does not prevent competitors from using another shape which uses the same technical solution to achieve a technical result.

In layman's language Lego were seeking to argue that since there were other shapes which could be used by competitors to create a toy construction brick which was capable of being used over and over again (or, in the jargon, multiple assembly and disassembly), the fact that the essential features of its brick appeared in order to achieve that result should not prevent their mark from being registered.

Mega Brands argued that if Lego were successful then Lego would be able to prevent any competitor from using the best, most functional shape for toy-bricks. That would therefore have the effect of Lego regaining the monopoly which it once enjoyed as a result of its long expired patents.

So what did the ECJ rule?[1]

They pointed out that each of the grounds of refusal of a trade mark must be interpreted in the light of the public interest underlying them. And the public interest underlying the ground of refusal in question was the need to prevent trade mark law granting an undertaking a monopoly on technical solutions or functional characteristics of a product.

Where the shape of a product merely incorporates the technical solution developed by a manufacturer and patented by it, protection of that shape as a trade mark once the patent has expired would considerably and permanently reduce the opportunity for other undertakings to use that technical solution.

The ECJ also pointed out that in crafting the grounds of refusal (referring as they do to shapes which consist "exclusively" of the shape of goods which is "necessary" to obtain a technical result) the legislature had taken account of the fact that any shape of goods is to a certain extent functional. What the legislature has done by the use of the words "exclusively" and "necessary" is to ensure that solely shapes of goods which incorporate a technical solution and whose registration as a trade mark would actually impede the use of that technical solution by other undertakings, are precluded from registration.

The upshot of the ECJ's analysis was that: (a) a sign will consist exclusively of the shape of goods which is necessary to obtain a technical result if all the "essential characteristics" of the shape perform a technical function, the presence of non-essential characteristics which have no technical function being irrelevant in that context; and (b) the use of the words "necessary" to obtain the technical result intended does not mean that the shape at issue must be the only one capable of obtaining that result.

Applying those principles to the Lego brick, the essential characteristics of the brick shape, being the two rows of symmetrical studs on the upper surface and its overall rectangular shape were elements which were necessary to achieve the intended technical result, being a toy brick which can be easily assembled and disassembled even by young children. The court did not need to assess whether those elements were necessary to achieve a technical result by reference to expert opinion (as had been argued by Lego), since it was clear from the patents which Lego had once owned that those elements did indeed have technical functions.

All is not lost, however, for Lego. Although their trade mark registration has been declared invalid and their little red brick no longer protected as a trade mark, the court did allude to the fact that Lego may be able to prevent its competitors from adopting similar shapes by using the laws of member states relating to unfair competition - although of course there is no European wide harmonisation of such laws.

For non-toy manufacturers the lessons to be learned from Lego are that it is unwise to seek to register a shape mark if the essential features of that shape are intended to achieve a technical result. And the fact that other shapes might be used to achieve the same result is irrelevant. But if you must persist in filing, try to include in the shape of the product some major arbitrary elements - such as a decorative or imaginative element - since this will assist your case. And once registered your shape mark may well deter competitors from seeking to use both the decorative and the technical elements of your mark.