On 11 December 2012, the Court of Appeal of Brussels ordered TKS SA ("TKS'), producer of Ice Watches, to stop using packaging which it found to be too closely resembling the Lego Juris AS' ("Lego") registered Lego brick shape.
The Belgian company TKS sells watches under the trade mark Ice Watch. The watches are sold in cuboid boxes with four pegs on the top side. Lego claimed that the box infringed the shape of its Lego bricks which it had registered as a trade mark and that the use of the boxes with four pegs by TKS constituted a form of unfair competition prohibited under the Law of 6 April 2010 on market practices and the protection of the consumer (Wet van 6 april 2010 betreffende marktpraktijken en consumentenbescherming / Loi du 6 avril 2010 relative aux pratiques du marché et à la protection du consommateur - the "Law on Market Practices"). The Court of First Instance held that TKS' boxes infringed the Law on Market Practices and accorded the injunction without analysing the position of Lego's shape mark (See, VBB on Belgian Business Law, Volume 2011, No. 12, p. 10, available at www.vbb.com).
By contrast, the Court of Appeal (the "Court"), decided to assess the validity and infringement arguments relating to Lego's tri-dimensional trade marks as well.
First, TKS argued that the shape, and the pegs in particular, were functional and therefore should be excluded from trade mark protection. However, the Court considered that Lego relied on its shape marks for (i) watches and other chronometrical instruments; (ii) plastic packaging; (iii) movable objects; and (iv) household containers, lunch boxes or key chains. In view of the products covered by the trade mark, the Court held that the registration of the trade mark did not "affect the availability of the technical solution".
The Court furthermore rejected TKS' argument that a brand which is well known for one product would be less likely to be perceived as an indication of origin for another product. Similarly, the Court held that TKS' statement that consumers do not perceive shapes as an indication of origin, did not hold true in the case at hand where the shape is very unusual for the products covered by the trade mark. As a result, the Court confirmed the validity of Lego's shape marks.
Further, the Court established that TKS used its boxes for products identical to those covered by Lego's trade marks. In addition, the shape of the box is very similar (or even identical) to the registered trade mark. The Court also considered that Lego's trade marks had a high distinctive character. As a result, the Court concluded that the relevant consumer could be led to believe that, due to the shape, the products concerned come from Lego or an economically linked company. Based on this finding, the Court judgment imposed a cease-and-desist order on TKS.
Furthermore, as regards the infringement of the Law on Market Practices, the Court confirmed the judgment of the lower court, which had already prompted TKS to adapt the design of the boxes in which it sells its watches.
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