LEGO bricks gain protection under unfair competition rules

In Lego System A/S v Biltema Sweden AB (Case Dnr C 14/03, October 1 2004), the Swedish Market Court has ruled that while Lego System A/S's competitors should be free to make use of the same interlocking system for their toy bricks as that featured on LEGO bricks, they must ensure that the bricks are distinguishable from LEGO bricks in terms of design, colour or other features.

The LEGO brick - a small rectangular brick with cylindrical studs on the upper surface - has been the source of heated legal debate in various jurisdictions, including Sweden.

In 1987 the Swedish Supreme Court held that LEGO bricks could not - despite having gained secondary meaning - enjoy protection as a trademark since the sign consisted of a shape that was necessary to obtain a technical result (NJA 1987, page 923).

In a later case (NIR 1991, page 502), the Court of Appeal held that a competitor of Lego, which manufactured toy bricks that were interchangeable with LEGO bricks, had a legitimate need under Article 6 of the Community Trademark Directive to indicate that its bricks were able to interlock with LEGO bricks and could be used together with these bricks.

In 1999 Lego succeeded in registering the shape of its bricks as a Community trademark on the basis of acquired distinctiveness. However, the Office for Harmonization in the Internal Market cancelled the registration on July 30 2004 pursuant to Article 7(1)(e)(ii) of the Community Trademark Regulation, holding that:

• the mark consisted exclusively of the shape of the goods;
  
  
• a certain result was obtained through that shape; and
  
  
• that result was of a technical nature.

(See Community trademark protection for LEGO shape mark denied.)

The latest Swedish decision stems from a passing off action filed by Lego against Biltema AB, a competitor, under the Swedish unfair competition provisions. The court held that unfair competition rules should not prevent a third party from marketing or selling toy bricks that feature the same type of cylindrical studs as LEGO bricks, which allow the third party's bricks to interlock with LEGO bricks. However, the court ruled that competing bricks must be distinguishable from LEGO bricks in terms of design, colour or other features. Considering that LEGO bricks come in all shapes and colours, the Market Court's decision seems to infer that only the interlocking mechanism is left without protection under unfair competition rules.

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.

Peter Skoglund, Advokatfirman Delphi & Co, Stockholm