The Drum Awards for Marketing - Extended Deadline

-d -h -min -sec

Lego

Court rules against Lego in copyright case

Author

By The Drum Team, Editorial

September 14, 2010 | 3 min read

Toy brick make Lego has lost its attempt to overturn a trademark decision protecting its standard red Lego brick at the European Court of Justice.

The Court today decided that the 2 by 4 red brick was ‘not registrable’ as a community trademark following an action from the toy company to overturn a ruling by the Court of First Instance that upheld a decision by the European trade mark office, which cancelled the registration of the red brick in 1999.

The lawyers for Lego had argued that the original ruling would "preclude any shape which performs a function from trade mark protection,” and argued that the wrong criteria for identifying essential characteristics of a three-dimensional trade mark had been applied, as was wrong test to determine whether the Lego brick was ‘functional.’

Shireen Peermohamed, partner in the Intellectual Property practice at London law firm Harbottle & Lewis, commented; “Today's Judgment of the Court of Justice marks the end of the road for Lego in its fight to have its brick shape registered as a trade mark in Europe. Lego's Canadian rival, Mega Brands, has finally succeeded in having Lego's brick trade mark cancelled.”

Peermohammed continued to say that a distinctive shape could in principle be registered as a trade mark, unless it is exclusively one which is necessary to obtain a technical result.

“This is where Lego's brick shape fell down, in contrast for example to the shape of the Coca-Cola bottle which has been registered,” she continued.

“The Court effectively took the view that all the essential characteristics of the Lego brick did perform a technical function - to enable bricks to be connected and stacked - even if other minor features did not, and this precluded registration. This is not the first time that shape trade marks have been denied protection on these grounds - dishwasher tablets and shavers too have faced similar objections.

“The Court appears to have been influenced by the public interest in ensuring that companies cannot use use trade mark law to secure a potential monopoly over technical solutions. If Lego had been allowed to keep its brick registration it could potentially renew it indefinitely and thereby impede the use by others of the same or similar solutions.”

Peermohammed concluded by highlight that the Court chose to leave open the possibility of Lego taking action under unfair competition laws, allowing it to object to copies of its bricks, meaning that the company’s fight may not yet be at an end.

Lego

More from Lego

View all

Trending

Industry insights

View all
Add your own content +