The Danish toy-making company Lego has recently been disappointed in its appeal to overturn the cancellation of its trade mark application. As reported in the "Trade mark law is child's play" article in our IP E-bulletin of December 2008, Lego sought to register a trade mark for the shape of a Lego brick. Lego wanted the power to prevent its competitors copying the shape of its distinctive toy bricks. Rival toy manufacturer Mega brands objected to the trade mark, however, and the European Court of First Instance ruled that the shape of a Lego brick could not be registered as a trade mark, as the shape serves a "functional purpose".

Under European Law, it is not permissible to register a shape as a trade mark if the shape is necessary to obtain a technical result (see Article 7(1)(e)(ii), Community Trade Mark Regulation 40/94/EEC, now 2009/207/EC). This rule is intended to avoid the situation whereby the proprietor of a trade mark has a monopoly on technical solutions or functional characteristics which a user is likely to seek in the products of competitors.

Lego has now appealed against the decision to the European Court of Justice ("ECJ"). The Advocate General has recommended that the ECJ dismiss the appeal. In coming to this decision, the Advocate General proposed a three-stage test for assessing whether a particular shape can be registered as a trade mark. If, after examining the most important elements of a shape, it is considered that all the defining characteristics perform a technical function, the shape itself is functional and cannot be registered as a trade mark. This is the first stage of the test.

If this is not the case, then the mark could be restricted to the essential and distinctive non-functional elements of the shape concerned. The Advocate General uses the example of a USB memory stick to explain this. The part which connects to a computer is functional, but the remainder of the device can have unique aesthetic elements. The Advocate General however notes that protecting the shape of a memory stick without the inclusion of the USB connection may be less effective as it may not be recognised as a memory stick. The Advocate General therefore suggests that alternative shapes could be considered, taking into account interoperability and availability. If sufficient alternatives are available, so that registration would not be detrimental to competition, then a shape could be registered as a trade mark.

The third part of the Advocate General's test is to determine whether the shape in question has a distinctive character. This analysis will take into account the overall impression conveyed by the shape, the point of view of consumers and the type of goods or services concerned.

Applying this test to Lego's brick shape, the Advocate General comes to the conclusion that since all the elements of the shape fulfil technical functions, the shape cannot be registered (it does not pass the first stage of the test).

It will now be a case of 'watch this space' to find out whether the ECJ follows the Advocate General's recommendation. The three-stage test proposed is somewhat complicated and may be difficult to apply in practice, so it remains to be seen whether the ECJ will adopt the same view.