A UK competitor of well-known Danish toy brand ‘Lego’ has had its application for a declaration of invalidity of Lego’s 3D trade marks rejected by the General Court of the European Union (“the General Court”).
In the latest of a series of intellectual property (“IP”) disputes, ‘Best-Lock’ applied to the General Court to annul the decision of OHIM in relation to Lego’s 3D trade marks. It relied on the following grounds to establish invalidity:
- the shape of the goods in question is determined by the nature of the goods themselves (namely, the possibility of joining them to other interlocking building blocks for play purposes); and
- the toy figures in question, both as a whole and in their particulars, provided technical solutions (namely, being combined with other building blocks).
OHIM rejected Best-Lock’s applications for a declaration of invalidity. Best-Lock therefore applied to the General Court for annulment of OHIM’s decision.
The General Court upheld OHIM’s decision that Lego’s 3D figures were protected by valid community trade mark registrations. The basis for the General Court’s decision was as follows:
- Best-Lock had not put forward any argument to support the assertion that the shape of the goods was determined by the nature of the goods themselves, and had not provided any reasoning to show that OHIM’s findings on that point were incorrect, so the complaint was inadmissible.
- No technical result appears to be associated with or generated by the shape of the essential characteristics of the figures (heads, bodies, arms and legs), as those characteristics do not enable the figures to be joined to interlocking building blocks. Further, the graphical representation of elements of the figures, do not enable it to be known whether these components have a technical function, and if so, what that is.
- There is no inference that the shape of the figures is necessary to enable the figures to be joined to interlocking building blocks: the ‘result’ of that shape is simply to confer human traits on the figures, which are used to represent characters in a play context.
Lego’s 3D trade marks therefore remain protected against competitors. This decision will act as a further reminder to competitors of the risk of IP infringement if similar-shaped figures are produced.
Best-Lock has indicated that it will launch a further appeal of the decision. We will keep you updated on this case.
Read the General Court Press Release.