Wendel Rosen's Intellectual Property Blog

Power to the People: EU Court Rules LEGO’s “Minifigs” Are Protectable Trademarks

Judge2In our previous post, LEGO Tries New Angle To Guard Its IP Against Upstart MEGA BLOKS, we wrote about LEGO’s efforts to protect its IP against alleged knock-off brick makers.  LEGO has now scored a victory in its ongoing efforts in its war against knock-offs.  In a ruling handed down on June 16th by the General Court of the European Union, the court rejected a bid by Best-Lock, a competitor of LEGO, to invalidate LEGO’s registration of a European Union trademark based upon the shape of its LEGO minifigs.

Back in 2000, LEGO obtained a trademark registration for the shape of its classic miniature person figurines, affectionately known among LEGO fans as “minifigs.”  That European Union trademark registration, termed a Community Trade Mark (CTM), was granted by the European Union’s Office for Harmonization in the Internal Market (Trade Marks and Designs) or “OHIM.”  In 2011, Best-Lock filed an application with OHIM seeking a declaration of invalidity of LEGO’s minifig trademark.  LEGO intervened in the case to defend its trademark registration.  After the application was rejected and that rejection was upheld by an OHIM appeal board, Best-Lock appealed the case to the General Court of the European Union.

The European Court considered whether LEGO’s trademark was invalid under regulations governing CTM registrations that bar registration where the trademark consists exclusively of a shape determined by the nature of the goods themselves or consists exclusively of the shape of goods necessary to obtain a technical result.

Best-Lock argued that LEGO’s minifigs have connectors on their heads and holes on their feet and other characteristics that allow them to interconnect with building blocks, hence rendering their shape functionally necessary to obtain a technical result.  An earlier LEGO CTM registration for its LEGO brick had been rejected for that very same reason.

This time, the Court sided with LEGO.

The Court observed that the first question was what were the “essential characteristics” of the contested mark.  Those essential characteristics were described by the Court as the shape of the head, body, arms and legs necessary to have the appearance of a human figure.  Those shapes are not dictated by any technical function.

LEGO MinifigEven if the parts of the minifig that allow for connections to LEGO’s brick system (like the stud on the top of the head) could be described as having a technical function, the Court reasoned that those characteristics were secondary to the essential characteristics of the mark and the overall impression conveyed by the mark, its human figure shape.  The toy’s overall shape that constitutes the trademark is not directly related to any technical function that the toy is designed to achieve.

As the Court explained, “[Best-Lock] neglected to mention what technical result a toy figure might be supposed to achieve” and that “…the fact that the figure in question ‘represents a manikin’ and may be used by a child in a play context was not a technical result.”  See Best-Lock (Europe) Ltd. v. Office for Harmonization in the Internal Market (Trade Marks and Designs (OHIM) (2016) Judgment of the General Court, June 16, 2015, Case No. T-396/14.

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