Lego has failed in its bid to register the shape of its play bricks as trade marks. A European court said that the brick shape was functional and that it had to be that shape to operate as it did, so could not be registered as a trade mark.
The Court of First Instance (CFI) of the European Communities backed a 2004 decision of the EU's trade marks office the Office for the Harmonisation of the Internal Market (OHIM) to cancel Lego's trade mark registration.
Lego told the Associated Press news agency that it expected to appeal the decision.
Shapes can be registered as trade marks just as words or logos can, though Lindsey Wrenn, a trade mark law expert at Pinsent Masons, the law firm behind OUT-LAW.COM, said that it was harder to be successful registering a shape for a trade mark than registering other kinds of characteristics.
"The law provides for 'the shape of goods or of their packaging' to be registered as trade marks," said Wrenn. "However, applications for shape marks are less likely to succeed than other regular marks because such registration would create a perpetual monopoly in a shape where other forms of IP, such as registered designs or patents, offer a shorter duration of protection."
In 1999 Lego applied to make its traditional brick a registered trade mark in Europe. Two days later, competitor toy brick company Mega Brands filed an objection to the registration. In 2004 the registration was cancelled by OHIM.
Lego appealed that decision in a case that went to OHIM's Grand Board of Appeal. That Board said that Lego could not be given a trade mark because the brick's shape performed a technical function.
Items whose shape performs a technical function cannot be trade marked because to give someone a monopoly over the shape would give them a monopoly over that function.
Lego argued that the rule on functionality was "not intended to exclude functional shapes per se from registration as a trade mark, but only signs which consist ‘exclusively’ of the shape of goods which is ‘necessary’ to obtain a technical result".
The CFI said that Lego bricks would not escape the rule on functionality just by adding non-essential characteristics.
"The addition of non-essential characteristics having no technical function does not prevent a shape from being caught by that absolute ground of refusal if all the essential characteristics of that shape perform such a function," said the CFI, backing the OHIM Board of Appeal.
Lego argued that the only shapes which should be barred would be ones that create a monopoly on a technical solution.
The CFI disagreed, saying that a shape could still be barred from registration as a trade mark even if the function of the shape could be achieved by other means or other shapes.
"In order for that absolute ground for refusal to apply, it is sufficient that the essential characteristics of the shape combine the characteristics which are technically causal of, and sufficient to obtain, the intended technical result, and are therefore attributable to the technical result," it said. "It follows that the Grand Board of Appeal did not err in considering that the term ‘necessary’ means that the shape is required to obtain a technical result, even if that result can be achieved by other shapes."
The Court backed the OHIM decision and ordered Lego to pay costs.
Trade marks are designed to reassure consumers that a good or service has come from the supplier that it claims to come from. Wrenn said that registering shapes is harder than registering logos or phrases because it is more difficult to claim that they indicate the origin of goods.
"It is difficult to establish that product shapes are viewed as having a trade mark function especially when it is often the case that product shapes are used in conjunction with other marks," she said. "The question is whether consumers would see the shape and automatically associate it with the applicant and understand the shape to be a trade mark and not simply part of the product design."
Shape trade marks are assessed in the same way as other applications, but they have additional hurdles to leap, said Wrenn. They cannot be registered if their shape results exclusively from the nature of the goods, if the shape is the way it is exclusively to achieve a technical result, or if the shape exclusively gives substantial value to the goods.
"There have been a number of shape mark cases, most notably in connection with the shape of dishwasher tablets where arguments that speckled tablets can distinguish detergent products have been routinely refused," said Wrenn.
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