After an 11 year battle by Lego to have its classic eight-studded red bricks trade marked in the European Union, the Grand Chamber of the European Court of Justice (ECJ) has upheld a 2008 ECJ General Court decision that dismissed Lego’s challenge to having its trademark rights in such bricks repealed, after objections from Canadian toymaker Mega Brands.
Article 7(e)(ii) of the Council Regulation (EC) No 40/94 (1993) (which prohibits the registration as Community trade marks signs which consist exclusively of the shape of goods which are necessary to obtain a technical result) proved fatal to Lego’s application. Despite Lego’s argument that there were several shapes or solutions which were possible to achieve the same technical result, the Court held that that fact did not mean that registering the shape at issue as a trade mark would have no effect on the availability to other competitors of the technical solution which the brick incorporates.
Public policy considerations were apparent in the judgment, as the Grand Chamber emphasised that registration of the humble toy brick’s shape would allow Lego to prevent any competitor from using, on the toy brick market, what was scientifically regarded as the most functional shape possible. This need to establish a healthy and fair system of competition outweighed Lego’s submission (which was not disputed) that its eight-studded bricks were distinctive in the market. In this regard, the Grand Chamber emphasised that to allow Lego’s application would in effect be extending the protection Lego previously enjoyed under its expired patent rights in the brick.
The registration of the brick as a trade mark would thus likely prevent Lego’s competitors from not only using the same shape, but also from using similar shapes. The Grand Chamber determined this was undesirable as it would considerably and permanently reduce the opportunity for other parties to use that technical solution.
As a result of this decision, Lego’s competitors may now copy the brick’s design as long as it does not have Lego’s name (which is trademarked) on it.