It is fair to say that 3D trade mark registrations are still relatively rare in comparison to their more conventional 2D counterparts, and as such, the decision by the General Court of the European Union in the attack by Best-Lock (Europe) Ltd against the validity of the registration of the three dimensional shape of a Lego figure has been eagerly awaited. However the decision is somewhat lacking in substance; indeed it is more a lesson in the importance of selecting the correct grounds of attack – and being in the position to prove those grounds – than a lesson in the validity of the Lego registration.
Best-Lock sought to invalidate the registration of CTM 000050518
(pictured above) under Article 7(1)(e)(i) of Community Trade Mark
Regulation No. 207/2009 – that the registration consists of a
sign which results from the nature of the goods themselves –
and Article 7(1)(e)(ii) of the Regulation – that the
registration consists exclusively of the shape of goods which is
necessary to obtain a technical result. Best-Lock however,
according to the General Court, summarily failed to adduce evidence
– or even in some instances, suitable argument – to
support these claims.
The General Court rejected the claim under Article 7(1)(e)(i)
outright on the basis that Best-Lock merely asserted – but
did not put forward any argument to support the assertion –
that the trade mark consists of a shape determined by the nature of
the goods themselves; nor did it provide any reasoning to show that
the Board of Appeal's findings in that regard were incorrect.
We can only speculate therefore at the reasoning that the Court
would have adopted on this ground – but it seems likely that
given a toy figure can take many forms, the specific representation
of a figure covered by the Lego registration is not determined by
the nature of the goods themselves.
Turning to the decision under Article 7(1)(e)(ii), the Court
stressed the importance of the words "exclusively" and
"necessary" in that Article – it acknowledged that
any shape of goods is, to a certain extent, functional, and that it
would therefore be inappropriate to refuse to register a shape of
goods as a trade mark solely on the ground that it has functional
characteristics. Rather, Article 7(1)(e)(ii) is only fulfilled when
all of the essential characteristics of a shape perform
a technical function – all features of the sign,
when put together, perform one technical function.
The Court determined that the essential features of the Lego
registration that enable the figure to have a human appearance are
the head, body, arms and legs, but held that none of the evidence
filed established that those particular elements serve any
technical function – indeed the Court went on to state that
it appears no technical result is connected to or entailed by the
shape of those elements. The Court held that Best-Lock had failed
to establish what technical result a toy figure might be supposed
to achieve beyond that of simply being a figure, and rejected the
claims of Best-Lock that modularity was a technical result, as in
contrast to a standard Lego brick – the subject of a separate
successful invalidity attack – the toy figure represented by
the contested trade mark was not modular, in so far as it could not
be combined with as many other identical figures as desired.
Crucially, Best-Lock's case fell apart with the Court's
accusatory comment that the graphical representation of the hands
of the figure and the holes under its feet and backs of its legs do
not, per se and a priori, enable it to be known
whether those elements have any technical function, and if so, what
that function is – the Court determined that without
observation or experience, the functionality of those features
cannot be inherently known, thereby defeating a trade mark
invalidity action brought under this Article. Furthermore, even if
the shape of those elements may have a technical function –
that of enabling them to be joined to other elements – those
features cannot be held to be the most important elements of the
mark, given that they do not comprise the essential features of the
registration.
Best-Lock seems to have based its invalidity action on information
beyond the graphical representation of the mark, resulting in a
fatal error in its invalidity attack, which by its very nature, is
an attack on the inherent registrability of the actual sign as
registered. Article 7(1)(e)(ii) is intended to prevent the
registration of a sign which is comprised of features that solely
perform a technical function – quite clearly the Lego figure
does not fit this brief. Best-Lock has fallen into the trap of
assuming that a 3D registration should be attacked on the grounds
that it comprises a shape, whereas a 3D registration is simply a
specific type of trade mark registration which must adhere to the
same criteria as any other trade mark registration.
Perhaps an attack against the distinctiveness of the sign under
Article 7(1)(b) would have been better placed – should a toy
maker be entitled to prevent other toy makers from producing human
figures in such a simplistic form? The recent Advocate General
opinion in the KitKat chocolate bar shape application stipulates
that mere recognition of a shape by the public is not sufficient to
show that the trade mark is distinctive, it must act as a badge of
trade origin. Does the Lego figure act as a badge of trade origin,
or is it simply a recognisable piece in a multifaceted play
set?
However, the question has to be asked whether the registration
needs to be invalidated at all. The Court itself has determined
that the essential features of the Lego figure are the head, body,
arms and legs, but that the arguably more technical features
– the shape of the hands and the holes under its feet and
backs of legs – do not comprise essential features of the
sign. How difficult would it be then to avoid infringement of this
registration? It is possible that simple changes to certain
anatomical elements of the figure might be sufficient to avoid a
likelihood of confusion, and thus avoid trade mark infringement
even where the more technical features are maintained. Has the
Court therefore simply invited other traders to create
interconnecting figures with certain different anatomical features
which will ultimately avoid infringement? If this is the case, one
wonders to what extent this decision will prove to be a victory at
all.
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