Community trademark protection for LEGO shape mark denied

The Cancellation Division of the Office for Harmonization in the Internal Market (OHIM) has ruled that a Community trademark showing a picture of a Lego brand of toy brick is invalid in relation to "construction toys". The OHIM held that the shape of the mark was necessary to obtain a technical result and as a consequence the mark could not be protected on the basis of acquired distinctiveness.

Kirkbi A/S, a Danish company that has links to Lego System A/S, registered a picture of a standard Lego brand of brick as a Community trademark. The mark was registered as a three-dimensional mark for, among other things, "games and playthings". The colour red was also claimed.

During the course of the registration proceedings, the OHIM stated that the mark was not eligible for protection as it was devoid of any distinctive character and consisted exclusively of a shape necessary to obtain a technical result. However, it later accepted the mark on the basis of acquired distinctiveness.

Canadian company Mega Bloks Inc applied to the OHIM to cancel the registration. It argued that as the LEGO brick shape had been protected by a number of patents that had now expired, the shape was excluded from being a valid trademark. Kirkbi denied that the mark fell within the scope of the patents.

The OHIM's Cancellation Division rejected both lines of argument but stated that patent protection, in itself, does not exclude trademark protection. However, it noted that the patents were relevant for the purposes of examining whether the shape of the mark was necessary to obtain a technical result and if registration was excluded for that reason.

In the opinion of the division, the shape of the LEGO brick mark was "technical" and the interlocking mechanism showed a "technical result" in relation to "construction toys". Referring to the recent decision of the European Court of Justice in Koninklijke Philips Electronics NV v Remington Consumer Products Ltd, the division stated that individuals should not be allowed to use a registration of a mark in order to acquire exclusive rights relating to technical solutions. The proper way to protect technical solutions is to obtain a patent. The protection arising out of a patent is limited in time and that should not be circumvented by seeking trademark protection.

Another relevant issue was whether the trademark consisted exclusively of the shape of the goods (ie, it had no other distinctive elements). The division considered that this was the case and that the claiming of the colour red did not add distinctiveness to the mark.

The division next examined whether the mark was valid on the basis of acquired distinctiveness. According to the Community Trademark Regulation, it is possible to overcome an objection of lack of distinctiveness by demonstrating that the trademark has become distinctive in relation to the relevant goods through use. However, it also provides that this does not apply in cases where the objection is that the mark consists exclusively of a shape necessary to obtain a technical result.

The division cancelled the LEGO brick mark in relation to "construction toys" but stated that it could remain registered for "games and playthings, except construction toys", and other goods.

For discussions of other cases involving LEGO shape marks, see Supreme Court to hear Lego appeal, Lego Case remanded to determine nature of blocks' shape and No form mark protection for LEGO.

Lisbet Andersen, Bech-Bruun Dragsted, Copenhagen