Decision Contrasts With Kit Kat Shape Trade Mark Case

The General Court of the European Union has ruled that Lego has a valid Community trade mark in relation to the shape of its minifigure.

Lego originally applied to register the shape of their anthropomorphic figures as a trade mark back in 2000.  However Best-Lock, a rival UK toy maker company which produces similar plastic figures, challenged Lego’s trade mark registrations and sought a declaration that the trade mark in relation to the shape of the minifigures should be declared invalid.   The grounds of invalidity were that the shape of the minifigures was determined by the nature of the goods themselves (such nature being the ability to attach them to other interlocking building blocks) and that the figures were that particular shape solely to provide a technical solution (again, being attached to other building blocks).

The General Court disagreed with both of Best-Lock’s arguments; on the first argument, the court held that Best-Lock had not put forward any arguments to support their assertion and as such it could not the submission was inadmissible.  On the second argument, the court found that the shape of the figures was there merely to provide the toys with human traits, and that the holes on the figures’ heads, legs and feet did not necessarily enable it to obtain a technical result.

Having unsuccessfully appealed the original registration in 2011 and 2013, it remains to be seen whether Best-Lock will take any further legal action in respect of this latest decision.

Expert Opinion

“With the children’s toy market worth so much and with Lego at the forefront, it is no surprise that Lego sought protection beyond the more commonly thought of trade marks such as names and logos. Being able to protect the shape of a product can be a mechanism for achieving a monopoly in the market. Examples of other shape trade mark registrations include the Coca-Cola bottle and the shape of a Toblerone. That said, the registration of shape marks has been notoriously difficult for brand owners owing to the requirements necessary to secure registration. Examples of other shape trade marks that have failed include the Philips 3 head rotary razor, Bang & Olufsen’s tall loudspeakers, Stokke’s Tripp Trapp chair and Dualit’s classic toaster. foot mixer.

The decision is also in contrast to the Kit Kat shape trade mark case we reported on earlier this week, a shape trade mark was not permitted. How a shape is graphically represented plays a part here; in Kit Kat Nestle did not do enough to prove that the four-fingers on their own, without an embossed logo and packaging, would be enough to act as a guarantee of origin to consumers. Here the reverse is true; Best-Lock simply did not do enough to convince the court that the shape of a Lego figure, presented without any other piece of Lego equipment, would lead people to believe that it was that shape due to technical necessity.”
Georgie Collins - Partner

To read our recent article on Kit Kat, click here