Lego has won a lengthy trade mark battle after the General Court ruled that the Lego man is held to be validly registered as a European 3D trade mark.
Protection was given to the mark for Lego’s man figure by the Office for Internal Market (OHIM) back in 1996, when it was successfully registered as a 3D trade mark for amongst other things, “games and playthings” in class 28. Best Lock (Europe) Ltd challenged the trade mark by claiming that Lego men are shaped characters and, therefore, the registration was invalidly registered as it consisted (i) exclusively of the shape which resulted in the goods themselves and (ii) exclusively of a shape necessary to achieve a technical result.
The challenge on the basis that the mark consisted exclusively of the shape which results from the nature of the goods themselves under Article 7 (1)(e)(i) of Regulation 207/2009 (“the Regulation”) was rejected. Indeed, so was the challenge under Article 7 (1) (e) (ii) which addresses whether the mark consists exclusively of the shape of the goods necessary to achieve a technical result. The General Court (Third Chamber) concluded that Best Lock had not presented any arguments to support either ground and so the minimum requirements of Article 44(1)(c) of the Rules of Procedure had not been fulfilled. The Court was critical of Best Lock’s general statements which did not specifically link to the evidence submitted in support of the invalidity claims. Would Best Lock have been successful if the grounds were specifically pleaded?
The Court took this opportunity to provide commentary on Article 7(1)(e)(ii) by stating that the criteria is only fulfilled when all the essential characteristics of a shape provide a technical function. This in turn means it is necessary to determine the essential and non-essential elements of the mark in question. In this case, the Court held that the head, arms, body and legs were the essential characteristics of the mark but that the hands, the raised stud on the top head and the holes in the feet were not. Consequently, the registration did not fall foul of Article 7 (1)(e)(ii) as all of the essential characteristics did not serve any technical function.
Against this backdrop, it would seem unlikely that the Court would have concluded that the mark consisted exclusively of the shape of goods necessary to achieve a technical result and so, despite the failings of Best Lock in the presentation of the legal case, the outcome is likely to have been the same.
Whilst the decision offers some clarity around the interpretation of the shape provisions, to my mind, it has also added a further layer of subjective consideration in the assessment of what are “essential and non-essential characteristics” of shape marks. In addition, how long before we see a referral to the Court of Justice to ask whether the technical function criteria are met if not all essential characteristics provide a technical function, but those that do not are not overly significant or dominant.