Brick held to consist exclusively of shape necessary to obtain technical result

European Union
In Lego Juris A/S v Office for Harmonisation in the Internal Market (OHIM) (Case C-48/09, September 14 2010), the Court of Justice of the European Union (ECJ) has upheld a decision of the General Court in which the latter had held that the shape of Lego Juris A/S's brick was functional and thus unregistrable under Article 7(1)(e)(ii) of the Community Trademark Regulation (40/94).
The case arose from an action filed by Mega Brands Inc for a declaration of invalidity of Lego's registration - a three-dimensional (3D) figurative trademark consisting of the upper surface and two sides of a Lego brick for, among other things, "games and playthings" in Class 28 of the Nice Classification:

Mega Brands claimed that the registration should be declared invalid for "construction toys", as the shape of the brick was necessary to obtain a technical result.      
Importantly, it was not disputed that the shape of the Lego brick had become distinctive through use and, therefore, was a sign capable of distinguishing Lego's goods from those of others. The judgment concerned only whether the Lego brick consisted "exclusively of a shape necessary to obtain a technical result" contrary to Article 7(1)(e)(ii), which states that such signs cannot be registered.
The General Court had found that the registration was invalid on the grounds that Article 7(1)(e)(ii) precludes "registration of any shape consisting exclusively, in its essential characteristics, of the shape of the goods which is technically causal of, and sufficient to obtain, the intended technical result, even if that result can be achieved by other shapes using the same or another technical solution" (for further details please see "CFI blocks Lego’s trademark bid").
On appeal, Lego argued that, although Article 7(1)(e)(ii) precludes the registration of shapes for which protection as a trademark would illegitimately restrict competitors, it does not seek to preclude the registration of any shape performing a technical function. Hence, the registration of a shape should be disallowed only if it would create a monopoly on technical solutions or functional characteristics. Therefore, the General Court had erred in law in failing to have regard to the fact that the availability of alternative shapes was highly relevant, since it proved that there was no risk of creating a monopoly.
The ECJ first stated that, by the terms 'exclusively' and 'necessary', Article 7(1)(e)(ii) ensures that only shapes of goods which solely incorporate a technical solution, and whose registration as a trademark would thus impede the use of that technical solution by other undertakings, are not to be registered.
The EJC agreed with the General Court in its interpretation of the terms 'exclusively' and 'necessary', and noted that the legislature has duly taken into account that any shape of goods is, to a certain extent, functional, and that it would thus be inappropriate to refuse to register a shape as a trademark solely on the grounds that it has functional characteristics.
The EJC further held that the presence of one or more minor arbitrary elements in a 3D sign, all of whose essential characteristics are dictated by the technical solution to which that sign gives effect, did not alter the conclusion that the sign consisted "exclusively" of the shape of goods which is necessary to obtain a technical result. On the other hand, this interpretation ensures that a sign cannot be refused registration as a trademark if the shape of the goods at issue incorporates a major non-functional element, such as a decorative or imaginative element which plays an important role in the shape.
With regard to the term 'necessary', the EJC stated that, even if the same technical result may be achieved by using alternative shapes, other dimensions or another design, this did not in itself mean that registration of the mark at issue would have no effect on the availability for other economic operators of the technical solution which it incorporates.
Lego further argued that any examination under Article 7(1)(e)(ii) should involve an identification of the essential characteristics of the mark from the perspective of the average consumer. The EJC dismissed this argument, holding that the presumed perception of the sign by the average consumer is not a decisive element when applying the grounds for refusal set forth in Article 7(1)(e)(ii), but, at most, may be a relevant criterion of assessment for the competent authority when it identifies the essential characteristics of the mark.
Finally, Lego claimed that the General Court had erred in law in determining that the existence of alternative shapes was irrelevant when examining the functionality of a mark consisting of the shape of goods. However, the EJC stated that, once the essential characteristics of the mark have been identified, it is necessary to assess only whether those characteristics perform the technical function of the product concerned. Such assessment may, among other things, take account of the documents relating to previous patents describing the functional elements of the shape concerned. In this case, the brick performed a technical function which was covered by Lego's earlier patents and, accordingly, such documents had been taken into consideration when examining the functionality of the mark.
Based on the foregoing, the EJC dismissed the appeal in its entirety.
As can be seen from the decision, shapes continue to be notoriously difficult to register as trademarks - especially where the technical solutions involved have previously enjoyed patent protection. It may be argued that the present judgment, which is the first in which the EJC has considered Article 7(1)(e)(ii) since Philips v Remington (Case C-299/99) (which concerned a graphic representation of the shape of the head of an electric razor), makes it even more difficult to obtain the registration of 3D figurative trademarks, except in cases where non-functional elements (ie, decorative or imaginative) play an important role.
Lego owns other trademark registrations for its Lego bricks. Consequently, this case does not deal with the overall extent of Lego's trademark protection, and the registration at issue was upheld for goods in Class 9 (including electric apparatus and instruments) and Class 28 to the exclusion of construction toys.

Nina Ringen, Plesner, Copenhagen

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