The ECJ tells Lego to let go of trade mark dream

The ECJ has dismissed Lego's appeal and ruled that the Danish toy company cannot register the three-dimensional shape of their iconic Lego brick as a trade mark.

Earlier this year, the EU General Court held that under Article 7(1)(e)(ii) of the CTM Regulations, as the essential elements of the Lego brick are exclusively and necessarily required to achieve a "technical result" it cannot be registered as a legitimate Community trade mark. The Advocate General agreed with this position and recommended that Lego's appeal be dismissed. For details of the history of this dispute, please click here.

Lego's appeal to the ECJ was dismissed. Lego argued that as similar shapes could achieve the same technical solution, the Court had erred by misinterpreting the regulation and incorrectly applying the test used in previous case law. In rejecting this argument the ECJ explained that the essential features of the Lego block are "necessary" to obtain a technical function and it did not matter that other shapes could perform the same function. The ECJ then clarified that a feature could be present for the "exclusive" purpose of achieving a solution, without it being the only possible way to achieve that solution.

Lego also argued that the Court should have considered the view of consumers when determining what characteristics were essential to the Lego brick. The ECJ held that while public perception in respect of trade marks can be important, it was irrelevant in questions of technical function.

Finally, it was Lego's position that the Court was wrong in not taking account of existing alternative shapes when considering the functionality of Lego blocks. Again, this was rejected by the ECJ who held that simply because another shape could perform the same function, this did not affect the decision to deny trade mark protection to the Lego brick. The ECJ were clear that trade mark protection should not be used where this could assist a company to create a monopoly on a technical solution to the exclusion of others. If another company were to copy the Lego block then it would be appropriate for Lego to challenge this under the unfair competition rules.

"Bud" battle continues

There has been a long history of proceedings between the Czech brewer Budejovocky Budvar, who is famous for "Budvar" beer, and the American brewery Anheuser-Bush Inc who brew "Budweiser". Both brewers have been using the name "Bud" for a number of years and neither wants the other to have the exclusive right to the name. For further details on the history of the dispute, please click here. The latest instalment in this boozy saga has been the release of the Advocate General's Opinion in advance of the ECJ hearing Anheuser-Bush's appeal. The Advocate General has agreed with Anheuser-Bush and recommended that the case be sent back to the EU General Court for determination. They previously allowed Budvar's opposition to Anheuser-Bush's application to register a Community trade mark incorporating the word "Bud" on the grounds of appellation of origin.

In terms of the first ground of appeal, the Advocate General explained that in considering whether Article 8(4) had been infringed, the EU Court should have had regard to Budvar's use of the word "Bud" in trade and that this meant focussing on (i) the quantity and quality of use; (ii) the relevant territory in which the word had been used; and (iii) the relevant time period within which the word had been used – this must not include the time after which an application to register a word had been made. The Advocate General also explained that Budvar's appellation of origin could be said to have only "local significance". It is clear that in order to oppose Anheuser-Bush's trade mark application, Budvar will need to show not only that they have a legal right to use the term "Bud" but also that they have been using it in practice.

The second ground of appeal relates to national proceedings based on appellation. Anheuser-Bush maintained that the General Court had been wrong in stating that the Office of Harmonisation in the Internal Market (OHIM) who had made the original decision, should have held its own proceedings, as the national courts would be the appropriate forum. The Advocate General stated that if Budvar wanted OHIM to have regard to the fact that any national proceedings were not final, the onus was on them to communicate this. It was also explained that Budvar need only have an abstract right to claim appellation of origin, and this did not have to be proved in a national court. However, had a national court ruled against Budvar in this regard, it could count against them.