The General Court of the European Union ruled that Lego can protect the shape of Lego figurines under trademark law.
Earlier, in 2010, the European Court of Justice rejected Lego’s attempt to have the shape of its Lego blocks accepted as a trademark.
The Court ruled in the 2010 case that the shape of the Lego block was functional:
The most important element of the sign composed of the Lego brick is the two rows of studs on the upper surface of that brick, which are necessary to obtain the intended technical result of the product, that is to say, the assembly of toy bricks.
However, the General Court found in the new ruling that the heads, bodies, and limbs of Lego figures do not serve a similar technical function.
Shapes as Trademarks
As we discussed recently, EU Advocate General Melchior Wathelet issued an opinion that EU law does not allow for the registration of the shape of a Kit Kat bar as a trademark.
Under UK law, a trademark may not be registered if
it consists exclusively of the shape which results from the nature of the goods themselves or of the shape of goods which is necessary to obtain a technical result.
As we discussed in this blog, it can also be problematic under US trade dress law to protect aesthetic design features of a product that also have practical benefits — such as the rounded corners of an iPhone.
The case is Best-Lock (Europe) v OHMI – Lego Juris.
Product designs can be protected in various ways — via trademark and trade dress laws, via design patents, and via copyright law. When developing an IP protection strategy, it is important to be aware of the risks and benefits of each form of protection, and how these vary across jurisdictions.
Leech Tishman’s Intellectual Property Group is based in Pasadena, California with a team of highly-regarded legal professionals with prosecution and litigation expertise in the fields of patent, trademark, copyright, and trade secrets.
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Photo Attribution: “BuschStadium 2006-05-30″ by pdsphil from Colorado Springs, Colorado, USA – Flickr. Licensed under CC BY-SA 2.0 via Wikimedia Commons.