The General Court has upheld the validity of LEGO’s below Community trademarks (corresponding to its mini-figures), challenged by Best-Lock Europe (Ltd), a UK toy-maker, in the context of relevant applications for declaration of invalidity initiated in 2012.
CTM No 50540
CTM No 50518
The grounds of invalidity were “first, that the shape of the goods in question is determined by the nature of the goods themselves (namely, the possibility of joining them to other interlocking building blocks for play purposes) and, second, that the toy figures in question, both as a whole and in their particulars, provided technical solutions (namely, being combined with other building blocks)“, as summarized in the General Cour’s handy relevat press-release No 71/15.
The key issue in this dispute was, as one would expect, whether the marks, consisting of the shape of the goods,
In 2 judgments rendered yesterday (case T-395/14 and T-396/14 corresponding to cancellation proceedings over CTM Nos. 50518 and 50540 respectively), the General Court had this to say: “Concerning the complaint that the shape of the goods in question is necessary to obtain a technical result, the General Court observes that it appears that no technical result is connected to or entailed by the shape of the essential characteristics of the figures (heads, bodies, arms and legs), as those characteristics do not, in any event, allow the figures to be joined to interlocking building blocks. In addition, the graphical representation of the hands of the figures in question, the protrusion on their heads and the holes under their feet and inside the backs of their legs do not, per se, enable it to be known whether those components have any technical function (such as enabling them to be joined to other components) and, if so, what that function is. Lastly, there is nothing to permit the inference that the shape of the figures in question is, as such and as a whole, necessary to enable the figures to be joined to interlocking building blocks: the ‘result’ of that shape is simply to confer human traits on those figures, it being understood that the fact that the figures in question represent characters and may be used by a child in an appropriate play context cannot be described as a ‘technical result’. The General Court concludes from this that the characteristics of the shape of the figures in question are not necessary to obtain a technical result.”
The complaint that the shape of the goods in question is determined by the nature of the goods themselves was rejected as inadmissible in so far as Best-Lock has, under he 2 judgments, not put forward any argument to support that assertion and has not provided any reasoning to show that OHIM’s findings in that regard were incorrect.*An initial version of this piece was published in MARQUES Class46 blog.