Lego Case remanded to determine nature of blocks' shape

Switzerland

The Swiss Federal Supreme Court has remanded the case of Lego System A/S v Mega Bloks Inc to the Commercial Court of Zurich to determine whether the shape of Lego's construction blocks is technically essential or only provides a technical advantage. In the latter case, the shape may be protected provided it has acquired secondary meaning (Case 4C.46/2003).

Mega Bloks, Lego's main competitor, initiated an action to cancel the registration of Lego's shape marks in Switzerland on the grounds that they were not distinctive. The Commercial Court of Zurich agreed, finding that the shape of Lego's blocks was merely functional and thus could not be protected (see No form mark protection for LEGO).

On appeal, the Supreme Court agreed that the rectangular form of the bricks was obvious. However, it departed from the lower court's conclusion that the blocks therefore had a functional shape. The Supreme Court found that the interlocking function of the bricks, achieved by cylindrical studs, did not characterize the nature of the toys, and thus, these cylindrical shapes should also have been examined to determine whether they fell within the category of protected three-dimensional signs.

The court identified four categories of three-dimensional signs:

  • shapes that result from the nature of the goods themselves (eg, a tennis racket), which may not be protected as they are functional;

  • technically-essential shapes, where there is no alternative shape available for competitors or the use of an alternative shape cannot reasonably be expected (eg, a cross-headed screwdriver);

  • shapes providing a technical advantage but that are not essential in the sense of the second category. Such shapes generally belong to the public domain because they are not inherently distinctive, but they can acquire distinctiveness through use (secondary meaning), in which case they may be protected; and

  • shapes that are technically useful but are not primarily determined by their technical use (eg, the triangular form of the TOBLERONE chocolate that makes it easier to break). Such shapes can be inherently distinctive; however, if they are not, they also have to acquire secondary meaning.

The Supreme Court remanded the case to the Zurich court to determine whether the cylindrical studs used to achieve the interlocking function fall within the second category of technically-essential shapes, or whether they only provide a technical advantage in the sense of the third category.

If the lower court were to find that the studs are technically essential, it would be justified in cancelling the registration of Lego's marks (pursuant to the interpretation of the European Court of Justice in Philips v Remington). If it were to conclude that the studs merely provide a technical advantage, Lego would have to prove that the shapes have acquired secondary meaning in order to maintain its trademark registrations.

Markus R Frick, Walder Wyss & Partners, Zurich

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