Keywords: CJEU, Community Trademark, Grounds
for Invalidity, Lego
On 16 June 2015, the General Court of the European Union (GC)
has dismissed an application for a declaration of invalidity in
respect of a three-dimensional Community Trademark for the shape of
a LEGO figure. Rival company Best-Lock, which offers
LEGO-compatible building blocks, had argued, among other things,
that the shape of a LEGO figure resulted from the nature of the
goods themselves and that the shape was further necessary to obtain
a technical result. Both constitute absolute grounds for invalidity
under Article 52(1)(a) and Article 7(1)(e)(i), (e)(ii) of the
Community Trademark Regulation (207/2009).
In respect of the complaint that the shape of a LEGO figure is
determined by the nature of the goods themselves, the General Court
rejected that complaint as inadmissible in so far as Best-Lock did
not provide any reasoning to show that the previous finding of the
OHIM in that regard had in fact been wrong.
Regarding the complaint that the trademark consists exclusively
of a shape necessary to obtain a technical result, the Court held
that the characteristics of the shape of the figures in question
were not necessary to obtain a technical result. Previously, in
2010 (C-48/09 P), the CJEU had ruled that all essential features of
the shape of a LEGO Brick were determined by their intended
technical effect, which is, that the bricks can be connected to one
another. As such, a LEGO brick had not been capable of being
registered as a Community trade mark. In the present case, however,
the GC held that no technical result seems to be entailed by the
shape of the essential characteristics of LEGO figures
(heads, bodies, arms and legs), as those did not allow the figures
to be joined to interlocking building blocks. Even if some elements
of the shape could be regarded as functional, the overall purpose
of the shape was simply to confer human traits on the figures.
Originally published June 17, 2015
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