Still Standing: Lego Man Retains His 3D Trade Mark23rd June 2015
Lego fans will be delighted to know the iconic ‘Lego Man’ retains his status as a 3D trade mark. The General Court has upheld a decision the well-known toy does satisfy the requirements for a 3D trade mark and dismissed an application to have the mark declared invalid.
Rival toy maker Best-Lock (Europe) Limited (“Best-Lock”) claimed the mark is invalid because the mark’s shape:
- is determined by ‘nature of the goods’ , i.e. the way the figure would interlock with other parts, such as lego bricks; and
- provides ‘technical solutions’, i.e. the ability for the figures to interlock with other parts and to move in a particular way.
Under the EC Trade Mark Regulation, a shape cannot validly be registered as a 3D trade mark if its distinctive shape:
- is due to the nature of the product protected by the mark; or
- is necessary for the product to function correctly.
Allowing a particular person or company to register these ‘necessary’ shapes would prevent other businesses or people designing or selling the same type of product without infringing the owner of the registered mark’s intellectual property rights.
In this case, however, the court held these objections were not valid. The nature of the product did not dictate its shape; plastic toy figures of this type could be made in “any form”.
In assessing whether the shape was necessary for ‘technical solutions’ the court reminded Best-Lock their assessment is based on the graphical representation of the mark and in particular the ‘holes’ which allow the figures to be attached other Lego pieces (see below) which “does not… enable it to be known whether those elements have any technical function and, if so, what that function is.”
They went further, stating even if they accept the holes are intended to allow a technical function, Best-Lock’s application would still fail as it could not show the shape is comprised exclusively of elements necessary for ‘technical functions’. In particular, the court noted the head, body, arms and legs of the figure were the ‘essential characteristics’ of the mark and these elements do not serve a technical function.
Interestingly, the court also held it was ‘irrelevant’ whether the figure was the result of creative design.
*© Image used with permission from Microsoft