The short answer
In Case C-48/09 P, decided on 14 September 2010, the EU Court of Justice held that the shape of the red Lego brick could not remain a Community trademark. All the essential characteristics of the shape performed a technical function, and the existence of other shapes that give the same result did not save the mark.
Case snapshot
| Item | Detail |
|---|---|
| Court | Court of Justice of the European Union (appeal from the General Court) |
| Case | C-48/09 P, Lego Juris A/S v OHIM and Mega Brands Inc. |
| Decided | 14 September 2010 |
| IP area | Three-dimensional shape trademark; technical result |
| Earlier steps | Cancellation Division 2004; Grand Board of Appeal; General Court (T-270/06) dismissed Lego's action in 2008 |
| Result | Lego's appeal dismissed; the brick shape trademark stayed invalid |
Background and facts
Lego held a Community trademark for the shape of its red toy brick. A competitor, Mega Brands, applied to have the registration declared invalid.
In 2004 the Cancellation Division of the Office for Harmonization in the Internal Market (OHIM) declared the brick shape invalid. Lego appealed unsuccessfully to the Grand Board of Appeal and then to the Court of First Instance (now the General Court), which dismissed its action in 2008.
Lego took the case to the Court of Justice. Lego had earlier enjoyed patent protection for the brick shape, which weighed against it.
The legal question
Does the rule that shapes necessary to obtain a technical result cannot be registered (Article 7(1)(e)(ii) of the Community Trade Mark Regulation) apply to the Lego brick, even though other shapes could achieve the same technical result?
The court's reasoning
- The Court confirmed its earlier approach in Philips v Remington: the ground applies when all the essential characteristics of the shape perform a technical function.
- Non-essential characteristics that have no technical function are irrelevant to that test.
- The Court refused the multiple-shapes argument. It is not enough that other shapes give the same result, because that would allow one company to monopolise a technical solution.
- Following earlier cases such as Benetton, it treated the registration of a shape that merely carries out a technical function as outside what trademark law should protect.
Result and outcome
The Court of Justice dismissed Lego's appeal. The registration of the red brick shape as a Community trademark remained invalid.
Analysis: why this case matters
The decision draws a line between trademark and patent law. A functional shape should be protected, if at all, by a patent for a limited time, not by a trademark that can be renewed forever.
It also shows the risk of relying on a shape that was once covered by a patent. The earlier patent was used as a sign that the shape serves a technical purpose.
Practical lessons for brand owners and inventors
- Do not rely on trademark protection for features that make a product work.
- Use design and patent rights for functional or ornamental shapes, and plan their expiry.
- If you want a shape mark, show that the essential features are distinctive and not technical.
- Expect competitors to attack shape marks on technical-function grounds.
Sources and further reading
Judgment summary and case note: MARQUES blog
Full judgment text (WIPO Lex)
IPKat: Lego trade mark dispute
This study is built from the sources listed above. Where a point comes from a secondary report rather than the judgment itself, we say so. Check the judgment before relying on any detail.
Questions and answers
Why was the Lego brick shape refused?
Because all the essential characteristics of the shape perform a technical function.
Does having other possible shapes help?
No. The Court rejected the multiple-shapes argument.
When was the decision?
On 14 September 2010.
Facing a similar dispute?
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