From children’s toys to video games, via blockbuster movies, the Lego minifigure has to be one of the most iconic toys of recent years. Released in its current form in 1978, over 3.7 billion “minifigs” have been produced. Such is the fame of the small plastic articulated figures, you would struggle to find someone in the developed world between the age of 5 and 65 who didn’t immediately recognise these little guys.
Lego was famously involved in an argument with Mega Brands relating to its Community trade mark for the shape of its red eight stud brick. In 2010, the EU Court of Justice decided that the shape was necessary to obtain a technical result (namely stacking of the bricks) and therefore fell foul of the shape exception in Article 7(1)(e)(ii) of the CTM Regulation. As such, Lego’s 1999 CTM was declared invalid.
It is therefore interesting to see that the EU General Court has upheld a decision of the Office for Harmonisation of the Internal Market (“OHIM”) that Lego’s three dimensional trade marks for the shape of its iconic minifigure are validly registered marks.
Best-Lock (Europe) Limited (“Best-Lock”), which makes its own similar figures, applied to OHIM for a declaration that the each of the trade marks was invalid on the grounds that they:
- consisted of a shape which was determined by the goods themselves;
- consisted of a shape which consists exclusively of the shape of goods necessary to obtain a technical result;
and in the case of the figures without a protusion on their heads, that the application was in bad faith and the sign was devoid of distinctive character. The General Court rapidly dismissed both of these points as being wholly inadmissible, given they were not advanced in any meaningful manner.
Of more interest are the shape objections. In the absence of any argument to the contrary by Best-Lock, the Court upheld the Board of Appeal’s position that a toy can take any shape and therefore the nature of the minifigure as a toy did not require it to be in human form. As such, Best-Lock’s argument that the shape was determined by the goods themselves under Article 7(1)(e)(i) was rejected.
The Court was keen to stress that, where an objection is raised regarding the shape of a mark being required to obtain a technical result (under Article 7(1)(e)(ii)) the contested trade mark must consist exclusively of the shape which is necessary to obtain such technical benefit. The Court emphasised that the condition will only be fulfilled when:
“all the essential characteristics of a shape perform a technical function, the presence of non-essential characteristics with no technical function being irrelevant in that context”.
On that basis, the General Court determined that the essential characteristics of the registered mark were the shapes that give the figurine a human appearance, i.e. arms, legs, torso etc. The General Court noted that none of the evidence led to a finding that those humanoid elements served any technical function.
The only technical features that the General Court was able to identify were the holes in the feet and back of the legs which allow the figures to interlock with other Lego products. The Court noted that it was not possible to determine this function from the registered mark. In any event. these holes could not be viewed as “the most important elements of that mark” and did not “constitute an essential characteristic of the shape in question”. As such the General Court concluded that the argument advanced by Best-Lock, namely that every detail of the shape of the figure performs an exclusively technical function should be rejected.
It is hard to argue that this is the wrong application of the technical function objection. It is interesting, however, that Best-Lock did not argue that the third shape objection should apply, namely that the mark consists exclusively of a shape which gives substantial value to the goods.