Lego: Bent out of Shape on EU ruiling

Lego trademarked its ""studs and tubes" interlocking brick system" in 1999. In 2004 the EU Court cancelled the registration after opposition from Mega Brands, Inc., Lego's competitor in this field.

Lego argued that its "studs" on the blocks were highly distinctive. The EU Court, interpreting the Directive 89/104, stated that its shape in not trademarkable. The EU Directive and the CTMR give a clear ground for invailidating a trademark i.e.:

• if the shape results from the nature of the goods themselves, or
• the shape is necessary to obtain a technical result, or
• the shape gives substantial value to the goods

(See Article 31(e), Directive; Article 7(1)(e), CTMR)

Lego's building blocks have two rows of knobs or "studs" on the top level. The Agency held that these "studs" are "utilitarian" and "not identifiers of source." (See Bloomberg)

Mega Brands, Inc. has similarly stituated knobs on its blocks. Infact, a comparitive image is provided below.

Source: Wikipedia

Mega brands also has blocks the studs in which are rounded. See here.

A previous ruling in Royal Philips Electronics v Remington clarified that a shape which offers a technical solution is not trademarable. A "techinical solution or functional characteristic of a product" cannot protected as a trademark if it stands to undermine competition and public interest. A trademark that has been refused registration under Article 3(1)(e) cannot be registered having later "acquired distinctiveness". This exception is available only to trademarks refused registration on grounds available under Article 3(1)(a)-(d). A protection extended to a technical solution within a product would make it inherently safe from competitive products, and thus go against public interest. The availability of more shapes for that same technical solution is not sufficient ground to overcome invalidity of registration based on Article 3(1)(e). This is because there might only be a few other shapes, ergo - cumbersome process and a wholly unsuitable alternative.

Though Lego has appealed the decision, based on precedent and the Directive, the argument that the Lego's "studs" are "highly distinctive", might face a second rejection.