No Trademarks Right To Lego Bricks
A discussion of the judgment of the Court of First Instance
dated 12 November 2008, T/270-06 (Lego / Mega Brands)
Lego had various patents to its well-known building bricks, but
these have meanwhile expired. Lego is trying to find additional
protection with the help of trademark law. In Canada a shape mark
has been applied for, but was eventually denied by the Supreme
Court due to functionality. In Europe, Lego attempts to do the same
with the filing of the following shape mark, among other things for
toys:
The competitor Mega Brands began invalidity proceedings before the
OHIM and was found for in two instances. According to the OHIM, the
trademark is invalid according to Article 7 (1) under e (ii) of the
Community Trademarks Regulation ("CTMR"), in which signs
that "consist exclusively of the shape of goods which is
necessary to obtain a technical result" are excluded from
trademark protection.
The Standard:
Philips/Remington
The quoted article leaves much space for interpretation.
Therefore, the British Court of Appeal had asked for an explanation
before, in the well-known matter of Philips versus
Remington (European Court of Justice ("ECJ") 18
June 2002, C-299/99). The question in particular was whether this
ground for exclusion could be averted by proving that there are
other shapes with which the same technical result can be obtained.
In that case, competitors would have the option of choosing these
alternatives. The ECJ has answered this specific question clearly:
the existence of alternatives is no reason to leave this article
unapplied.
The ECJ is rather less clear about the broader question how exactly
this Article is to be applied then. According to the ECJ, the
provision intends "to preclude the registration of shapes
whose essential characteristics perform a technical
function". This seems to be a reformulation of the legal
criterion, the surplus value of which is not clear at once.
According to the ECJ, the rationale of the provision is
"to prevent the trademark proprietor from being granted a
monopoly on technical solutions or functional characteristics of a
product which a user is likely to seek in the products of
competitors."
Exclusive and
Necessary?
Lego attempts through many ways to arrive at a limited
interpretation of Article 7 (1) under e (ii) of the CTMR and the
Philips/Remington judgment, which indeed calls for an
interpretation of its own too. If the sign must consist (for the
application of this provision)
"exclusively" of the shape that
is necessary for a technical solution, then does not the addition
of any unnecessary element mean that the shape escapes this
provision? The Court of First Instance ("CFI") said
"no". The ECJ uses the test that the essential elements
must perform a technical function. In the analysis, only essential
characteristics should therefore be looked at and not non-essential
additions. But if the shape must be
"necessary" for the technical
solution, than surely a good touchstone would be the question
whether the exterior of the shape could be changed without the
shape losing its functional character? In other words, whether
there are alternative shapes having the same technical result? The
answer of the CF was "no"; in Philips/Remington
the ECJ has ruled precisely that the ground for refusal is not set
aside by the existence of alternative shapes.
Technical
Solution/Technical Result
Lego then formulated an argumentation that actually elaborates
on the fact that the ECJ alternates the words "solution"
and "result" in Philips/Remington without a
clear reason. Lego stated that what the ground for refusal intends
to prevent is a monopoly on a specific technical solution. There
are various technical solutions that may lead to the same technical
result. Irrelevant as it may be whether the same technical result
can be reached with various solutions (see
Philips/Remington), it is definitely relevant whether a
specific solution can be reached with different shapes. If no
variety in shape would be possible, a monopoly on a solution would
indeed arise, so that the trademark would have to be excluded from
registration. But if there are alternative forms for the same
solution, there is no reason to exclude the form from trademark
protection, since in that case no monopoly on the technical
solution will arise.
The CFI did not follow this line of reasoning. What the ECJ
has denied is the relevance of "other shapes which can obtain
the same technical result". So this is not about
alternative solutions, but about alternative shapes. The existence
of such shapes does not change the effect of Article 7 (1) under e
(ii). Furthermore, the ECJ explicitly stated that "a shape
whose essential characteristics perform a technical function may be
freely used by all". So the objective not only relates to
the technical solution, but precisely also to the shape and its
essential characteristics. Consequently, Lego was unsuccessful with
its distinction (colored by patent law) between "technical
solution" and "technical
result".
Essential Characteristics
What followed was an extensive discussion of the question
whether OHIM had identified the "essential
characteristics" of the shape correctly, and whether it had
judged the functional character thereof correctly. In Lego's
opinion its filing relates exclusively to the design and proportion
of the studs, for which many alternatives are imaginable having
exactly the same technical effect.
It is somewhat unfortunate that the OHIM has not only involved
the top view of the Lego brick (visible in the trademark
registration) in its consideration, but also the other elements
known to all (especially the open bottom that connects to it). The
OHIM received a small reprimand for this from the CFI. However, the
further findings of the OHIM about the upper side are sufficient to
uphold the adjudication. The argument that many alternative designs
are imaginable is of course not successful (in view of the
foregoing). Once it has been determined that the essential
characteristics of the shape fulfill a technical function, the
existence of alternatives is no longer relevant.
In Europe too, we therefore witness the downfall of this
trademark registration, at least for the time being. It is doubtful
whether Philips/Remington has become much clearer in the
process.