Yesterday, 14 September 2010, the European Court of Justice (“ECJ”) rendered its judgment in Lego Juris/OHIM (C-48/09).1 The ECJ ruled that the three-dimensional shape of the well-known Lego toy brick cannot be protected as a Community trademark.

In this case, Lego filed an application for a Community trademark at OHIM. It concerns the three-dimensional sign showing a Lego toy brick.

Shortly after the trademark was registered, Mega Brands Inc., Lego’s main competitor in the market, applied for a declaration that the trademark was invalid pursuant to amongst others Article 7(1)(e)(ii) of the Community Trademark Regulation (“CTMR”). This Article stipulates that signs which consist exclusively of the shape of goods which is necessary to obtain a technical result shall not be registered.

The General Court found the trademark to be invalid because the most important elements of the sign (its ‘’essential characteristics’’) are the two rows of studs on the upper surface of the Lego brick, which are necessary to obtain the intended technical result of the product, i.e. to attach the bricks to one another.

The ECJ upheld this decision in its judgment. First, the ECJ considered that in the system of intellectual property rights in the EU, technical solutions are capable of protection only for a limited period, so that subsequently they may be freely used by all economic operators. A trademark is not meant to grant a monopoly on a shape which is necessary to obtain a technical result, even not if the shape has become distinctive in consequence of the use which has been made of it.

Second, the ECJ ruled that the criterion “exclusively” in Article 7 (1)(e)(ii) CTMR is fulfilled “when all essential characteristics of a shape perform a technical function, the presence of non-essential characteristics with no technical function being irrelevant in that context”.

This implies that if a sign were to have a major non-functional element, such as a decorative or imaginative element which plays an important role in the shape, the registration as a trademark cannot be refused under Article 7(1)(e)(ii) CTMR.

Third, the ECJ noted that the condition “exclusively” in Article 7(1)(e)(ii) does not mean that the shape at issue must be the only one capable of obtaining that result. In this respect the ECJ referred to its decision in the Philips/Remington case (C-299/99) and considered the fact that trademark protection will also cover similar shapes, not only identical shapes/solutions.

The overall conclusion is that Lego’s technical solution – the toy brick – cannot be protected by Community trademark law, because such a registration would excessively harm the opportunity for competitors to place goods on the market whose shapes provide the same technical solution.

The ECJ, however, indicated that an action might be available under unfair competition rules, in particular regarding slavish copying. In an earlier Dutch case an action based on such unfair competition failed.