Grand Board upolds cancellation of Lego shape mark

European Union

The new Grand Board of the Office for Harmonization in the Internal Market has issued a ruling upholding the Cancellation Division's decision to cancel Lego Juris A/S's registration of the shape of a lego brick.

Mega Brands Inc manufactures toy building bricks and is a competitor of Lego. Lego succeeded in registering the shape of a toy building brick as a Community trademark in 1999. Mega Brands successfully applied to the Cancellation Division to have the registration cancelled. Lego appealed and requested that the Grand Board be convened to decide on the appeal.

Article 130(2) of the Community Trademark Regulation provides that, in certain specific cases, decisions shall be taken by an enlarged Board of Appeal. Commission Regulation 2082/2004 identifies this enlarged board as the Grand Board, consisting of nine board members. The Grand Board was set up to deal with legally difficult cases or to harmonize diverging decisions of the Boards of Appeal on a point of law. By accepting this case, the Grand Board recognized that the application of Article 7(1)(e)(ii) of the Community Trademark Regulation concerning the registrability of the shape of a product is a legally difficult matter.

In a bid to overcome the obstacle of the European Court of Justice's (ECJ) decision in Koninklijke Philips Electronics NV v Remington Consumer Products Ltd, Lego argued that the design and proportions of its shape were not functional. However, the Grand Board rejected this on the basis of evidence that Lego had protected the shape by way of various patents and it confirmed the findings of the Cancellation Division that the features of the Lego brick perform particular technical functions. The Grand Board interpreted the words "consists exclusively of the shape of goods which is necessary to obtain a technical result" in Article 7(1)(e)(ii) as:

"'exclusively' means that the shape has only one purpose (ie, to achieve a 'technical result'). While the word 'necessary' means that the shape is required to achieve that technical result ... Clearly the Lego brick's features were adopted to perform the above-mentioned utilitarian function of the Lego brick, and not for identification purposes in the trademark sense."

It is expected that this case will eventually reach the ECJ, giving it the opportunity to clarify further its Remington/Philips decision.

Paul Steinhauser, Steinhauser Hoogenraad Advocaten, Amsterdam

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