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)
July 26, 2009 4 Comments
Pursuant to Sec. 8 (2) No. 2 Trademark Act, the letters “CCCP” designating the former Soviet Union can not be registered as a trademark for clothes, T-shirts and sweatshirts.
Despite the fact that the former Soviet Union does no longer exist as a state, the Cyrillic letters CCCP are still suited as designation of geographical origin pursuant to Art. 8 (2) No. 2 Trademark Act.
The decision is based on two key points:
1. Also an out – of – date local designation may be non protectable if it is still seen as indication of location at least in parts of the relevant circles.
2. National designations of no longer existing states can evolve into – non protectable – indirect designations of geographic origin.
Federal Patent Court 21. Jan 2009 – 26W (pat) 2/ 08
May 21, 2009 No Comments