The popular toy – the well-known LEGO bricks – were again the subject of a court case – the first case was about the protection of the brick as a trademark. This was denied. Now the ECJ has ruled that the brick can, however, at least enjoy protection as a design. Comment by Daniel Sebastian, attorney and managing director of IPPC Law GmbH, Berlin
Many people still know the colorful bricks from their own childhood. At that time there were LEGO building blocks also only from the manufacturer LEGO A/S. But in the meantime, after 20 years, the patents have expired and there are cheap replicas from the Asian region. Lego tried to defend itself against this and attempted to register the Lego brick as a three-dimensional trademark (3 D trademark).
However, the European Court of Justice (ECJ) ruled in its judgment of September 14, 2010, C-48/09 P, that the Lego brick was not eligible for trademark protection.
Lego had initially registered the brick as a patent. After the expiry of the 20-year protection period, Lego applied for the brick as a 3D trademark.
This trademark was first registered, but was later cancelled at the request of a competitor. The reason given for the cancellation was that the trademark consisted solely of the shape of the product, which was necessary to achieve a technical effect. This view was also held by the European Court of Justice at the time. In the reasons for the judgment, it literally states:
„Indeed, where the shape of a product consists only in the fact that it embodies the technical solution developed by its manufacturer and patented at the latter’s request, protection of that shape as a trade mark after the expiry of the patent would considerably restrict the possibility for other undertakings to use that technical solution in the long term. However, in the system of intellectual property rights as it has been developed in the Union, technical solutions are protectable only for a limited period of time, so that thereafter they can be freely used by all economic operators.“ ECJ, judgment of 14.09.2010, C-48/09 P
The current ruling is therefore a surprise
For now the court ruled:
„Exceptionally, however, the mechanical connecting elements of combination parts may form an important element of the innovative features of combination parts and constitute an essential factor for marketing and should therefore be eligible for protection.“
„It is for the applicant for invalidity proceedings to prove, and for EUIPO to establish, that all the features of appearance of the product covered by the contested design are exclusively due to the technical function of that product.“ – ECJ Judgment in Case T-515/19, March 24, 2021.
This proof was not successful, rather at least one of the appearance features of the product covered by the contested design was not exclusively conditioned by the technical function of the product.
In plain language, this means that the stone was designed not only on the basis of its pure function, but also on the basis of its aesthetic effect and can therefore enjoy protection as a registered design.
What are the implications of the ruling for consumers?
It is to be expected that Lego will now increasingly try to force cheap imitators out of the market. However, the current ruling only relates to one particular brick, not all bricks. In particular, the classic, two-row bricks are not affected.
This will make it more difficult for imitators to produce 1:1 copies of current kits and distribute them legally.
If it is not a case of trademark piracy, i.e. „genuine fakes“ of the originals, this does not constitute a trademark infringement. This would only be the case if the logo and the Lego name were also used. This could also be problematic for the purchaser if he could recognize that it was a fake and ordered several products at once. Because then, under certain circumstances, an intention to resell can be assumed.
The sale of counterfeit products can even be relevant under criminal law. According to Sections 143 (1) No. 1 and (5), 14 (2) No. 1 and (3) No.2 MarkenG, a violation of the Trademark Act can be punished with imprisonment of up to three years or a fine.
In the case of high-priced items, such as iPhones or Louis Vuitton bags, most judges assume a commercial interest even when two or three counterfeit products are purchased. However, as long as the goods are ordered for private use, buyers are not liable to prosecution.
For Lego kits, the number would probably have to be higher, or several absolutely identical kits would have to be ordered. However, it can happen that orders from abroad, e.g. from China, lie longer at customs and, in addition, an import sales tax is required.
What else needs to be considered?
There are numerous risks, especially when selling branded goods via online stores or eBay. The threshold for commercial trading is relatively low here; even the regular sale of goods of the same type, for example toys or children’s items, can lead to one being classified by the courts – and by the „competition“ – as acting in a commercial capacity.
In doing so, one must pay particular attention to the fact that the branded products offered are really genuine. Otherwise, you could face warnings for trademark infringement and, in the worst case, even criminal proceedings.
If you are trading commercially, there are also many other regulations of competition law that must be observed, starting with simple things such as the obligation to provide an imprint and references to the statutory right of withdrawal.
Here, too, there is the threat of warnings under competition law if these rules are not observed.
Ideally, you should always seek advice beforehand, preferably from a lawyer experienced in these areas of law.
Attorney Daniel Sebastian, Kurfürstendamm 103, 10711 Berlin, Germany, and his company IPPC LAW Rechtsanwaltsgesellschaft mbH have been among the experts in demand for years for the protection of copyrights and trademark rights. The firm’s activities focus on contract law, copyright and media law, industrial property rights (competition law) and claims management. The law firm IPPC LAW Rechtsanwaltsgesellschaft mbH represents clients not only in Berlin, but nationwide. Further information at: https://www.ippclaw.com/
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