For several years, Lego Juris A/S has sought trademark registration for the shape of its signature brick.
Those efforts hit the figurative brick wall last month when the European Advocate General of the Grand Chamber affirmed a lower court’s decision invalidating registration of the Lego brick mark as a Community Trade Mark. In 1996, Lego’s predecessor applied to register the mark and succeeded. However, in 1999 the predecessor of Mega Brands sought a declaration that the Lego brick trademark was invalid on the basis that it represented a shape of goods that is “necessary to achieve a technical result”, for which registration is prohibited under Article 7(1)(e)(ii) of Regulation 40/94. The Cancellation Division granted this request and cancelled the registration.
On appeal, the Grand Board affirmed, stating that the Lego shape was a technical solution and thus “capable of protection only for a limited period” such as under patent law.
In the United States, Lego has taken a different approach to protect its brick shape. Rather than focusing on trademark protection for the toys, Lego’s recent U.S. trademark applications for the brick shape cover Lego’s other goods and services, including clothing, theme park services, retail store services, and commemorative books. In August 2010, the USPTO indicated that this registration would be allowable and published the application for opposition. Lego’s actions in the U.S. illustrate that trademark owners may have several avenues to consider when protecting a mark. The avenue ultimately selected may depend on both business goals and the likelihood of success of each option.