Supreme Court cancels Lego's 3D mark

On July 16 2009 the German Federal Supreme Court has affirmed decisions of the Federal Patent Court (Cases I ZB 53/07 and I ZB 55/07) in which the latter had ordered that Lego Group's three-dimensional trademark for its toy brick be cancelled.
In 1996 Lego, the Danish manufacturer of the well-known Lego brick, successfully applied for the registration of a three-dimensional trademark consisting of the shape of its toy brick for goods in Class 28 of the Nice Classification (construction toys). Several competitors applied for a declaration that the registration was invalid on the grounds that the shape was functional pursuant to Section 3(2)(2) of the German Trademark Act. Section 3(2)(2) states that trademarks which consist exclusively of a shape which is merely functional are not eligible for trademark protection. In 2007 the Federal Patent Court held that the shape of the Lego brick was functional and ordered that Lego's trademark be cancelled.
On appeal, the Federal Supreme Court agreed with the findings of the Federal Patent Court. First, the Supreme Court considered that the brick's cubic shape was the elementary form of this type of goods. Therefore, the top of the Lego brick, which is characterized by round studs, was the key element in determining whether the brick could be registered as a trademark. The court found that this feature was designed to facilitate the interlocking of the bricks. Consequently, it was functional insofar as the interlocking of the bricks is necessary to achieve larger constructions. The round studs on the top of the brick, which Lego claims are a symbol of its company, were thus nothing more than a technical solution to connect one brick to the other. Therefore, this feature was also not protectable as a trademark. The court concluded that the characteristics of the lego brick had to be kept free for use by competitors.
The decision is not surprising, as it is in line with the judgment of the Court of First Instance (CFI) in Lego Juris AS v OHIM (Case T-270/06). In that case, the CFI affirmed a decision of the Grand Board of Appeal of the Office for Harmonization in the Internal Market in which the latter had held that the shape of the Lego brick was functional and thus unregistrable under Article 7(1)(e)(ii) of the Community Trademark Regulation (40/94). In particular, the Grand Board had found that the fact that a mark has acquired distinctive character under Article 7(3) of the regulation does not prevent the application of Article 7(1)(e)(ii) (for further details please see "CFI blocks Lego’s trademark bid"). 
The Federal Supreme Court’s decision is also in line with the landmark Philips decision (Case C-299/99), in which the European Court of Justice refused to allow the registration of the shape of a three-headed shaver.
Petra Laumann and Peter Ruess, Freshfields Bruckhaus Deringer LLP, Düsseldorf

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