• EU General Court upholds the 'Lego man' shape Community trade mark; the case reminds that shape trade marks can offer useful protection and be successfully defended
  • Case shows how EU courts may assess challenges on the basis that the shape of the goods is necessary to obtain a technical result

What's it about? 

Best-Lock Europe Ltd (Best-Lock), a toy manufacturer, applied to have Lego's registration of the Lego man shape as a Community trade mark (CTM) declared invalid. 

Best-Lock sought a declaration of invalidity under the EU CTM Regulation on the grounds that: (1) the shape results from the nature of the goods themselves, or (2) the shape of the goods is necessary to obtain a technical result (here being joined with other toy building blocks). 

At trial the court held that Best-Lock had not provided sufficient argument to support the first ground and this was dismissed. On the second ground, that the shape was necessary to obtain a technical result, the court said:

  1. Firstly, the most important elements of the shape must be identified. Here the court identified the shape's essential characteristics as the Lego man's head, body, arms and legs which allow the figure to have a human appearance. The court found no technical result was connected to these;
  2. The representation of the elements of the Lego man shape which can be joined to other blocks (eg, the Lego man's hands and the 'bobble' on their heads) in the trade mark registration's graphical representation does not by itself allow it to be known whether these elements have a technical function, and in any case, these elements were not an essential characteristic of the shape; and 
  3. The result of the shape of the Lego man figure as a whole was to confer human traits on it and not a technical result. The fact that the Lego man might be used by children as a toy was also not a technical result. 

As a result, the General Court rejected Best-Lock's application and upheld the Lego man shape CTM. 

Why does it matter? 

The case is a useful contrast to the recent Kit Kat case, reminding that it is possible to successfully defend challenges to shape trade marks. It also highlights that 'technical result challenges' will be judged by looking at the shape's most important characteristics and by whether a technical result is apparent from the graphical representation of the shape in the trade mark's registration.

Now what? 

The case is a reminder that companies should consider registering shape trade marks in appropriate cases. 

Case T-395/14, Best-Lock (Europe) Ltd v OHIM