No TM rights on LEGO bricks confirmed

After the Cancellation Division of the OHIM, the Board of Appeal and the (formerly named) Court of First Instance, it has now been the turn of the ECJ to hold on September 14, 2010, that the Lego brick could not be registered as a mark in respect of construction toys because the shape at hands was necessary to obtain a technical result.

Worthy of note are the ECJ findings that, when all essential characteristics of a shape perform a technical function, the presence of non-essential features with no technical function is irrelevant to overcome the grounds for refusal of signs which consist ‘exclusively’ of the shape of goods which is necessary to achieve a technical result along with EU provisions.

lego  bricks

The Court also took into account the existence of patents owned by LEGO when stating that a product shape incorporating a technical solution which has been patented can not enjoy protection as trademark, especially once the patent has expired, as this would considerably and permanently reduce the opportunity for other undertakings

So… here is the result of a battle which started since more than 10 years ago (the application for a Declaration of Invalidity was filed during October 1999)! Given the past position of the (formerly named) Court of First Instance and the ECJ being only entitled to rule on legal aspects, this outcome is not a real surprise to our view.

The decision goes far beyond a mere application of the strict Community case law against 3D trademarks. It actually operates an in-depth analysis of the very particular situation at hands based on previous findings of the proceedings and remains very instructive.

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