According to Advocate-General Paolo Mengozzi, the registration of the Lego building block as a trademark is impossible because all the characteristics of the blocks are functional and must remain available to any toy manufacturer. The rationale of the applicable Community regulation ⁽¹⁾ is to prevent trade mark protection from granting a monopoly, he explained. The advocate-general handed down his opinion, on 26 January, in a case pitting the Danish firm LEGO against its main competitor, MEGA Brands, over the possibility to register a photographic representation of a typical LEGO building block as a trademark (Case C-48/09 P, Lego Juris A/A v OHIM and MEGA Brands).

MEGA Brands and the Office for Harmonisation in the Internal Market (OHIM) maintain that such registration must be turned down due to the essential characteristics of the shape of the brick, which because of their functionality, must remain available to any toy manufacturer. The Court of First Instance, which rejected LEGO’s application for annulment of the OHIM decision, sided with them, in November 2008 (Case T-270/06), in a judgement stating that LEGO’s three-dimensional building block presents functional aspects, which constitute absolute grounds for refusal of registration as a trademark. It rejected LEGO’s arguments that the existence of other shapes for achieving the same technical result proves that there is no risk of a monopoly by LEGO.

APPEAL REJECTED

The case in point is an appeal lodged by LEGO against the CFI ruling, which the applicant says deprives all functional shapes of the protection conferred by trademark law and is based on erroneous functionality criteria. The advocate-general rejects these criticisms and invites the court to clarify its Philips ruling, of 18 June 2002 ⁽²⁾. The reasoning of that ruling, explaining why registration of a trademark must be rejected, remains valid for this case. In the Philips case, which concerned the graphic representation of the shape of the head of a type of electric razor designed by the Dutch firm, the court held that Community trademark law constituted an obstacle to prevent a mark composed exclusively of the shape of a product from being registered. Based on that ruling, the advocate-general states that the court “did not absolutely preclude marks composed of functional shapes from being registered, although it did not make this easy”. The court “did not close the door”. The advocate-general’s opinion seeks to give nuances to the Philips ruling and to detail the procedure that should be observed to determine when essential functional characteristics of the shape – and these alone – lead to rejection of registration. He stresses the necessity of identifying the important elements of the shape: if all the essential characteristics of the shape for which registration is sought perform a technical function, then the shape must be considered functional and may consequently not be registered as a trademark.

Case law

The Philips judgement is the only ruling relevant to settlement of this dispute. In that case, the court determined that trademark law is meant to prevent protection conferred by registration from granting its proprietor a monopoly on technical solutions or functional characteristics of a product which a user is likely to seek in the products of competitors or from serving as an obstacle to prevent competitors from freely offering for sale products incorporating such technical solutions or functional characteristics in competition with the proprietor of the mark. Council Regulation (EC) 40/94 “pursues an aim which is in the public interest, namely that a shape whose essential characteristics perform a technical function may be freely used by all”. The court also held that this regulation “reflects the legitimate aim of not allowing individuals to use registration of a mark to acquire or perpetuate exclusive rights relating to technical solution” and that there is nothing in the regulation from which it may be concluded that the existence of other shapes for achieving the same technical result can overcome the ground for refusal or invalidity contained in the provision.

⁽¹⁾ Council Regulation 40/94 on the Community trademark
⁽²⁾ Court judgement of 18 June 2002, Philips, C-299/99