By Keith Burke, Solicitor and Registered Trade mark Agent, Intellectual Property and Technology Unit
Trade marks come in all manner of varieties and are a prevalent feature of a consumer’s everyday life. Whilst trade marks are typically thought of as logos or distinctive word marks, a recent appeal brought by toy manufacturing giant Lego Juris A/S (“Lego”) is testing the limits of what European trade mark law will allow as a registered trade mark.
Trade marks differ significantly from other forms of intellectual property in that the period of protection for a registered trade mark is renewable indefinitely (contrast the 20 year life span of a granted patent). The rationale for this is that a trade mark, as a “guarantee of origin”, is of benefit to consumers whereas an indefinite monopoly on inventions or designs would serve to hinder competition.
In order to be capable of enjoying protection as a registered trade mark, the mark must be “a sign capable of being represented graphically and capable of distinguishing the goods/services of one entity from those of another”. Shapes are capable of registration as a trade mark (e.g. Kraft Foods hold several registrations for the triangular shape of their Toblerone chocolate bar) however, they are considered more difficult to obtain registration for.
The Story of Lego
Lego originally enjoyed patent protection for its toy building bricks and established itself as one of the world’s best known brands during that period of protection. Following the expiration of its patent protection period, it inevitably faced competition from copycat competitors offering similar bricks for sale. Lego, keen to protect its market position, applied to the Trade Marks and Designs Registration Office of the E.U. (known as “OHIM”) to register its red three dimensional building brick as a trade mark. If successful in its application, Lego would have a significant advantage over its rivals by virtue of the indefinite period of protection afforded by a registered trade mark. The application was accepted and the depiction of the red lego brick was registered as a Community Trade Mark in 1999. Shortly thereafter, a competing manufacturer of toy building bricks, MEGA Brands Inc., sought a declaration from OHIM that the registration was invalid on the basis that the lego brick “consisted exclusively of the shape of goods which was necessary to obtain a technical result”. An argument on this basis seeks to assert that to allow registration of the lego brick as a trade mark would be to grant an indefinite monopoly right to a technical solution for goods of this nature (i.e. construction toys). MEGA Brands’ action was successful and the Cancellation Division of OHIM declared the trade mark registration invalid in 2004.
Two unsuccessful appeals have brought Lego to the eve of a European Court of Justice hearing but the recent opinion of Advocate General Mengožži delivered on 26th January 2010 suggests they face an uphill battle in reversing the trend of their appeals to date. The Advocate General is of the view that all characteristics of Lego’s brick are functional in nature and this finding is fatal to Lego’s ability to argue that the shape of their brick belongs in the realm of the registered trade mark (and thus potentially capable of indefinite monopoly protection).
Consequently, whilst the red building brick may be considered synonymous with Lego by many, the European Court of Justice appears set to determine that Lego is pushing the bounds of what may constitute a registered trade mark beyond the limits of European trade mark law. Lego surely await the final decision of the European Court of Justice with trepidation and must hope that the Lego brand itself is sufficient to preserve its market position.
For more information on trade marks and branding contact our Intellectual Property and Technology Unit.
Lego seeks registration of a red building brick as a trade mark.
Lego await the final decision of the European Court of Justice upon this after the Advocate General has expressed a view the brick is functional in nature and is incapable of being a registered trade mark.