General Court: Trademark protection for “LEGO toy figure”

In its judgements T-395/14 and T-396/14 dated 16 June 2015, the General Court decided that the famous “LEGO toy figure” can be protected as a Community trade mark.

15 years ago, Denmark’s Lego Juris A/S (LEGO) obtained the registration of two three dimensional Community trade marks for its toy figures for “games and playthings; decorations for Christmas trees”. 11 years later, LEGO’s competitor Best-Lock Ltd. (Best-Lock) filed an application seeking the declaration of invalidity of the trade marks, complaining that the shape of the toy figures was determined by the nature of the goods themselves and further that the marks consisted exclusively of the shape of goods necessary to obtain a technical result (Art. 7(1)(e)(i) and (ii) of the Community Trade Mark Regulation).

The General Court disagreed and dismissed Best-Lock’s action. In response to the complaint that the shape of the goods in question was determined by the nature of the goods themselves, the Court pointed out that a toy could be manufactured in any form. Regarding the question whether or not the trade marks consist exclusively of the shape of goods necessary to obtain a technical result, the Court determined the head, body, arms and legs to be the essential characteristics of the contested trade marks as those were necessary in order for the figure to have a human appearance. It then held that no technical result was connected to or entailed by the shape of those elements, which do not allow the figure to be joined to interlocking building blocks. The Court held that the shape simply conferred human traits on the figure and thus dismissed the claim.

At first glance the judgement seems to be a surprise. It was only five years ago when the CJEU declined trademark protection for the LEGO brick. However, the General Court argues that the two cases need to be distinguished. It remains to be seen whether or not the CJEU will follow the General Court’s opinion. Best-Lock has already announced that it will appeal the decisions.

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