Mega Bloks' toy brick claim knocked down by Lego

Netherlands

In Mega Bloks Inc v Lego System A/S (Case 118470/HA ZA 03-501, July 6 2005), the Breda Court of First Instance has dismissed Mega Bloks Inc's application for a declaration that its toy building bricks do not infringe the famous toy bricks manufactured by Lego System A/S.

Mega Bloks' application is part of a long-running international battle between Mega Bloks and Lego over Mega Bloks' rights in the shape of its toy bricks. Lego brought a counterclaim against the application. Lego admitted that it could not rely on any IP rights in respect of the shapes of its Lego and Duplo bricks. Therefore, it based its counterclaim on slavish imitation of the shapes under common law. It stated that the similarities between the two shapes would cause confusion to the public.

Mega Bloks' argued that Lego's bricks do not have "their own face and place on the market" because the elements of the shape of the bricks that are dictated by their function must be disregarded. When that is done, said Mega Bloks, nothing distinctive remains. The Breda District Court rejected this argument, reasoning that the shapes of the Lego and Duplo bricks have a unique position on the Dutch market for toy brick systems. It noted that the only differences between the two parties' bricks are their colour and the trademark used. The court agreed with Lego that the similarities between the bricks would lead to consumer confusion. In particular, the court stressed the fact that the two sets of bricks are interchangeable, which heightened the likelihood of confusion when the products are removed from their packaging. Mega Bloks could have used a different size of brick and connection system.

Accordingly, the court issued an order preventing Mega Bloks from marketing its bricks in the Netherlands.

It is interesting to note that the court's reasoning in this case seems to be contrary to the findings of the European Court of Justice (ECJ) in Koninklijke Philips Electronics NV v Remington Consumer Products Ltd. In that decision, the ECJ held that the rationale of the grounds for refusal of registration laid down in Article 3(1)(e) of the Community Trademark Directive is to prevent trademark protection from granting its proprietor a monopoly on technical solutions or functional characteristics of a product that a user is likely to seek in the products of competitors. The idea that a competitor could use a different shape for its product, as applied by the Breda court in the Lego Case, was expressly rejected. It is unlikely that the ECJ would accept a similar monopoly under common law.

For discussions of other cases in the dispute between Mega Bloks and Lego, see Supreme Court hears Lego appeal, LEGO shape mark cancellation action blocked by Supreme Court, Lego Case remanded to determine nature of blocks' shape, No form mark protection for LEGO, Supreme Court to hear Lego appeal and Lego block's look cannot function as a trademark.

Paul Steinhauser, Steinhauser Hoogenraad Advocaten, Amsterdam

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