Lego figures found in EU Court
As competitors have increasingly begun to threaten Danish toy company Lego in making somewhat similar toys, the question has turned upon what in fact Lego owns in relation to its figures and whether a competitor would infringe Lego’s rights in making similar toys.
A recent challenge to Lego was posed by Best-Lock, a Lancashire-based toymaker, however the EU court ruled that the shape of Lego’s figures is a protected trade mark and therefore any copying of the shape will constitute an infringement.
Lego is the world’s biggest toy maker and challenges by competitors to their valid ownership of claimed intellectual property rights have inevitably arisen. In an attempt to protect their dominance of the market, Lego registered the ‘three dimensional trade mark’ for the shape of the mini figures in 2000. Best-Lock argued that the shape of Lego’s brick-men and women was determined by the fact that they were a part of a toy that involved ‘the possibility of joining them to other interlocking building blocks for play purposes’, which would have made the trade mark invalid by making them fall into what is known as “the must fit” exception to trade mark registration.
Despite Best-Lock’s attempts, the EU court held that the essential elements of Lego’s figures had nothing to do with their ability to join them to other building blocks. The court held that the figures were distinctive and, as such, were valid trade marks. Although there is always the possibility of appeal, at present Lego can effectively monopolise this distinctive toy.
Whilst this is a triumph for the leading toy maker, this is just one successful case for Lego out of a number of challenges from other companies. In 2010, Mega Bloks won its case and Lego was prevented from registering a red toy building brick as a trade mark. The European Court of Justice ruled that the 8-peg design of the original Lego brick ‘merely performs a technical function and cannot be registered as a trade mark’. An English challenge was also successful in suing Lego in the German courts where it was denied that Lego could register a trade mark to protect the shape of its bricks.
The recent Best-Lock case confirms the legal position of the protection of the shape of Lego’s figures, however there is the potential for a number of other cases, from competitors, which may answer additional questions over trade marks in relation to toy makers.
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