Lego Protects Lego Man Trademark

09 02 2016

Lego has successfully defended its European shape trademark for their ‘Lego man’ after a three-year long legal battle with one of their competitors, Best-Lock.

The shape of Lego’s famous figurines has been trademarked in Europe since June 2000 which has prevented Best-Lock from entering the European market with their own incredibly similar, but lower-priced figurines.

In May 2012, Best-Lock attempted to have Lego’s trademark declared invalid on the basis that the shape was incapable of being trade marked on the following grounds: that the shape of the ‘Lego man’ was determined by the nature of the goods itself, that the shape of the ‘Lego man’ was necessary to obtain a technical result and that Lego acted in bad faith when filing the application for their trade mark.

Best-Lock’s application to have the trade mark declared invalid was rejected by the Cancellation Division in June 2013. Best-Lock then appealed to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (‘OHIM’) which dismissed the appeal in March 2014 holding that the ‘Lego man’ shape was not determined by the fact that the goods were toys, as toys could be manufactured in any form. Furthermore, the OHIM held that Best-Lock failed to establish what technical result a toy figure, such as the ‘Lego man’, might be supposed to achieve. Finally, the OHIM found that the evidence Best-Lock brought in relation to Lego acting in bad faith in registering the trade mark was irrelevant to the question at hand.

Best-Lock then appealed to the EU General Court, which handed down its judgment in June 2015 dismissing the appeal. The Court held that the essential characteristics which were relevant in considering whether the shape of the ‘Lego man’ was necessary to obtain a technical result were those features which were necessary to give the figure a human appearance – namely the head, body, arms and legs. The Court held that there was no evidence that permitted a finding that these features served any technical function. Best-Lock argued that the shape of the hands and the holes under the feet and inside the back of the legs of the ‘Lego man’ performed the technical function of adjoining the ‘Lego man’ to other interlocking building blocks. However, the Court held that these holes were not the essential characteristics of the trade mark, as the ‘result’ of the ‘Lego man’ shape is simply to confer human traits.

This case offers interesting insight into how a shape trade mark may be analysed in the face of a ‘technical result challenge’ in Europe. It comes as a win for Lego after the EU’s top court rejected its application to trade mark its eight-studded red building bricks in 2010.

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