The last brick of the Lego saga ?
On December 2, 2006 the news was published that Lego Juris
A/S also contested, before the European Court of Justice, the
decision of the Grand Board of Appeal against the registration
of the famous brick as a shape trademark. Below is our brief comment.
The Community decision against the famous Lego brick, which was
the subject of several successive disputes at our Courts for years,
is a point for reflecting once again on the protectability of
a shape trade mark.
Lego
Juris A/S, which makes and distributes the famous Lego
games, had, in fact, long protected the “brick” through
patents. After the patents expired in 1973, Lego obtained the
Italian registration of three trade marks protecting the shape
of the brick – which, however, it waived later on.
In 1999 Lego filed a European Community trade mark application
for the registration of the brick as a three-dimensional trade
mark, but the rival company
Mega
Brands Inc. - which distributes a slightly different
and bigger version of the known “modular games” –
filed for and obtained the nullity of Lego’s trade mark
application.
In an attempt to overcome the Philips
vs. Remington decision, Lego filed appeal with the
Grand Board of the Community trade mark office (OHIM), arguing
that the shape (design and size) of its brick did not meet the
functionality requirement; therefore, under art. 7(1) (e) (ii)
of the Community Trade Mark Regulation (CTMR) No. 40 of 1994,
no object could be validly registered as a trade mark. Recently,
OHIM rejected this thesis on the basis of the functionality proofs
- the expired patents - thus confirming the cancellation decision
of the three-dimensional trade mark Lego:
(http://oami.europa.eu/LegalDocs/BoA/2004/en/R0856_2004-G.pdf).
In particular, the Court of Appeal sets forth that the expression
“exclusively” in the clause ex art. 7(1) (e) (ii)
of the CTMR [“…excluded from registration are signs
exclusively consisting of the shape of the product required to
achieve a technical result…”] should be intended in
the sense that the exclusive function of the shape is indeed to
achieve a technical result. Instead, the expression “shape
of the product required” indicates, according to the Court,
the shape required to obtain a determined technical result.
In that sense, continues the Court, the design and structure of
the Lego brick were designed and adopted in order to achieve the
utilitarian function of interconnecting the single bricks, instead
of serving the distinctive purpose typical of a trade mark.
On 25 September 2006 Lego Juris appealed the rejection before
the European Court of Justice and the judgement is still pending.
With respect to the protectability of the Lego brick, different
decisions have been issued by Italian Courts; among them, the
Court of Appeal of Milan (28 October 2003), which ruled that Mega
Blocks Inc. should only be deemed guilty of unfair competition
for misappropriation ex art. 2598 No. 2 of Civil Code.
The same Court also considered an important difference between
the interconnections of the modular series and the tout court
interconnections, admitting the former to patent protection and
excluding the latter which are subject to the rules on the shape
exclusively determined by the technical function.
The importance of all the aforementioned decisions rests on the
fact that they concern the debated compatibility between the patent
protection system, on the one hand, and that of distinctive signs
and unfair competition on the other hand - see, on the subject,
De Marco Raffaello Stefano, Reasons and limits of ultra-patent
competitive protection of the modular products in “Il Diritto
Industriale” (Industrial Law) No. 5/2004, page 476.
The Court of Justice’s judgement, due to be issued at the
end of the year, will be a further instalment on the question
which some define an irreparable inconsistency between the principle
of unrelatedness to the product, typical of the protection for
distinctive signs and the patent protection for technical innovations
and functional shapes, that is all those shapes capable of enriching
a product from a technical viewpoint.
Will this really be the last brick of the Lego saga?
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