In 2000, Lego registered the following CTM (image below) in respect of, amongst other things, games and play things.
Best-Lock", a competitor toy company, challenged the validity of the CTM in 2011 on the basis that:
- The shape of the goods is determined by the nature of the goods themselves (i.e. the possibility of joining them to other interlocking building blocks).
- The toy figures provided a technical function as their design enabled them to be combined with other building blocks.
The General Court discussed Best-Lock’s opposition and held:
- No technical result is achieved by the essential characteristics of the figures (head, bodies, arms and legs), as those characteristics do not allow the figures to be joined to other building blocks.
- The graphic images alone of the hands," protrusion on head and holes under feet do not tell a third party whether they have a technical function.
- The shape of the goods are simply to confer “human traits” and to represent figures which may be used by a child in a play context which cannot be described as a “technical result”.
Recommended course of action
This decision may result in other toy manufacturers applying for trade marks in respect of the visual characteristics of products.
Retailers should be mindful if purchasing toys in the future which look like and are a low cost alternative to Lego. Given the amount of time that it has taken Lego to successfully register the CTM it is likely that an aggressive enforcement policy will follow.