The EU Court of Justice has ruled that the Lego brick is not registrable as a Community trade mark, thus ending almost 15 years of controversy surrounding the famous eight studded brick. In 1996, Lego filed an application at the Office for Harmonisation in the Internal Market (OHIM) for registration of the red brick as a Community trade mark. OHIM initially registered the mark, however, following an application from a competitor, Mega Brands, OHIM declared that the mark was invalid as the brick’s specific features were adopted to perform a function, and not for identification purposes.

Following unsuccessful appeals to the Grand Board of Appeal of OHIM and the General Court (formerly the Court of First Instance), Lego appealed to the EU’s Court of Justice (ECJ). The ECJ stated that trade mark protection cannot be utilised so as to grant a company a monopoly on technical solutions or the functional characteristics of a product. In essence, where the shape of a product merely incorporates the technical solution developed by the manufacturer of that product and patented by it, then it would significantly reduce the opportunity for other companies to use that design once the patent had expired if the manufacturer was allowed to trade mark it.

Lego also argued that there were numerous alternative shapes available and, as such, there would be no effect on the availability of that particular technical solution to other companies. The ECJ rejected this as the Community trade mark regulations would also prevent a competitor from using similar shapes and not merely the shape which was registered.

The court did acknowledge the potential difficulties faced by companies in Lego’s circumstances and suggested, without any detailed discussion of the issue, that competition law may offer a potential remedy. Given the complexity of this area and the differing rules which often apply between EU Member States, this may, in reality, offer little comfort to Lego.

For further information please contact David Cullen or Leo Moore of our Intellectual Property department.