LEGO mini-figures stand up to scrutiny as court dismisses intrusive imitation

Denmark

As well as LEGO bricks, LEGO Juris A/S manufactures and sells a number of other products. These include LEGO mini-figures, which have been sold since 1978.

LEGO holds a Danish patent registration (DK 140 394) for its mini-figures. It also holds a three-dimensional Community trademark (CTM) registration for the mini-figures, obtained in 2000 (CTM no 50450). This registration is subject to a pending opposition.

Plastic Factory COBI SA also manufactures and sells play figurines. LEGO argued that certain of these figurines violated its rights.

On May 17 2013, in LEGO Juris A/S v Plastic Factory COBI SA (V-96-11), the Maritime and Commercial Court found for LEGO.

The court stated that the LEGO mini-figure is the result of extensive research and development. The expert opinion obtained by the court confirmed that the mini-figures are the result of an original, personal and independent creative contribution. Furthermore, the LEGO mini-figure has such an individual and original appearance that it must be considered as an independent work and is therefore protected under Section 1 of the Copyright Act.

As mentioned above, LEGO had obtained a three-dimensional CTM registration. The court noted that applications for trademarks that consist exclusively of shapes that are necessary to obtain a technical result will not receive protection under Section 2(2) of the Trademarks Act and Article 7 of the Community Trademark Regulation (207/2009).

The main characteristics of the LEGO mini-figure were deemed to be the shape of the head, the trapezoid torso and the design of the arms, legs and feet. The expert opinion given to the court suggested that a number of these form elements are not merely functional; these elements could thus be manufactured such that they differed from the LEGO mini-figures, while remaining compatible with the LEGO system.

The expert witness also confirmed that the above-mentioned patent did not contain directions detailing the design of, for example, the front of the torso, head, arms and legs.

Following this and other observations, the court found that the essential features of the LEGO mini-figure could not be considered to correspond to technical functionality. The court also stated that the LEGO mini-figure is characteristic, well known and well liked. The court therefore argued that it was able to benefit from both trademark protection and protection under Sections 1 and 18 of the Act on Marketing.

The court found that the COBI figurines were an intrusive imitation of the LEGO mini-figures and that a risk of confusion existed. Consequently, COBI's marketing and sale of its figurines was deemed to be a violation of LEGO's rights under the Copyright Act, the Act on Marketing, the Trademarks Act and the Community Trademark Regulation.

Questions of compensation and damages will be decided at a later date.

Mads Marstrand-Jørgensen, MAQS Law Firm, Copenhagen

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