LEGO brick – trademark cancelled
The German Federal Court of Justice (BGH) has confirmed the decision of the Federal Patent Court in regards to the cancellation of the registration of the LEGO brick as a trademark.
The LEGO brick had been registered as a three dimensional mark with the German Patent and Trademark Office in 1996. The cancellation is based on an infringement of Sec. 3 subsection 2 no. 2 of the German Trademark Act (MarkenG) pursuant to which signs consisting exclusively of a shape necessary to obtain a technical result are not capable of protection as a trade mark.
The court considered the brick’s cubic shape as irrelevant in regards to trademark registration. Pursuant to Sec. 3 subsec. 2 no. 1 German Trademark Act signs consisting exclusively of a shape resulting from the nature of the goods do not qualify as a trademark. Hence, to decide whether the LEGO’s brick could be trademarked, the focus was on the brick’s upperside burlings only.
However, the court argued that the function of these burlings is of technical nature only (“connectors”) which pursuant to Sec. 3 subsection 2 no. 2 of the German Trademark Act prevents a mark from being protected.
The underlying principle of Sec. 3 subsec. 2 German Trademark Act is the idea that – in the interest of free competition – certain shapes can not be protected as a trademark.
So far, in this matter only the press release has been published.
(Federal Court of Justice -16. Jul. 2009 – I ZB 53/07 and I ZB 55/07)
4 comments
Dear Chris,
What does this mean for non-trad marks across Europe?
Using the Lego story as a springboard, I’m working on a story about protection for non-traditional marks in the EU.
A senior corporate counsel said to me: “It seems like non-traditional marks don’t really stand a chance in Europe. They’re rejected by most trademark offices and even OHIM try their best to avoid registering them, see for instance the Bang & Olufsen case re a loud speaker which is clearly distinctive.”
I wondered if you’d concur with the above opinion, in general and if applied specifically to 3D marks. What is the landscape like for non-traditional marks in Europe (at national and Community level)?
Any thoughts would be useful!
Adam Smith
Reporter
World Trademark Review
http://www.WorldTrademarkReview.com
Email: asmith (at) worldtrademarkreview (dot) com
Dear Adam,
thanks a lot for your comment. I think non-traditional (or as some say: non-conventional) marks are certainly facing more difficulties than their conventional counterparts in terms of registration.
I think that due to the very nature of non-conventional marks there will always be a potential conflict between the need for trademark protection on one side and the need to keep a mark free for the trade in order to prevent a illegitimate restriction of competition. This is especially the case for 3D marks (e.g. LEGO). They are always in danger to resemble a generic form or to perform a technical function.
And I can understand that this is often very frustrating for companies who need to secure and expand their branding in todays competitive marketplace. It seems that courts and trademark offices are applying the law quite restrictive (sometimes too restrictive it seems).
These difficulties are reflected in the small number of non-traditional trade marks registered. They are only a tiny fraction compared to traditional trademarks registered.
Hope this helps.
Chris
Hi Mr. Chris,
Nice discussion here on non-traditional marks in the EU. Thanks.
- Vincent
Student
If you are a business, an innovative individual or are a part of a group of inventors who have invested their time and capital in successfully coming up with a useful invention, then the only protection and security to your claim is the law.
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