Continuation of the review of the legal history of the LEGO company, about LEGO blocks as inventions and industrial designs can be read above. This publication discusses the legal protection of blocks as trademarks.
The LEGO company realized two disadvantages of legal protection of its blocks by patents: firstly, world novelty is necessary (which is difficult to achieve in relation to, for example, the basic Lego blocks described in the company's first patent); secondly, patent rights cannot give a perpetual monopoly; on the contrary, the monopoly period is relatively short (as a rule, the validity period of patents cannot exceed 25 years).
At the same time, the company intended to obtain protection of its objects from counterfeits of competitors, and therefore resorted to a non-trivial method: registering the block as a trademark.
A trademark is especially attractive due to its potentially unlimited period of protection; for example, in Russia a trademark has legal protection for 10 years with the possibility of renewal an unlimited number of times.
A trademark provides legal protection to any designation suitable for individualization, i.e. distinguishing the goods of the copyright holder from the multitude of goods of any other persons. For example, the Lego company logo is a trademark [1], and it distinguishes its products from other manufacturers' toy sets.
The ability of the base block to differentiate Lego's products is not obvious, if only because competitors release similar blocks after the patent goes into the public domain. The described doubts arose in law enforcement practice.
In 1996, LEGO filed for registration of its red base unit in the European Union. The European Office provisionally rejected the application because, in its opinion, the shape of the toy block was devoid of any distinctive features and the potential trademark consisted solely of the shape of the product (part of a toy construction set) which was conditioned to achieve a technical result.
The LEGO company, in response to the temporary rejection of the application, indicated that the block is associated in the minds of the average consumer as a product of the LEGO company due to its worldwide popularity and recognition of the product. The European Office agreed with the company’s arguments and the trademark was registered under number 000107029 for toys, including construction toys [2]:
Fig. 1. Trademark No. 000107029
In 1999, Ritwik Holding Inc. filed an objection to the registration of a trademark in relation to building designers, since the trademark reproduces the external form of the product necessary to achieve a technical result [3]. The European Office reconsidered its position and supported the opinion of Ritvik Holding Inc.: it canceled the registration of the trademark in relation to construction toys on the basis of Article 7(1)(e)(ii) of the European Trademark Regulation
as a designation that reproduces the shape of a product necessary to achieve a technical result [4].
The Department's Appeal Board, as well as the European General Court, agreed with the Department's position. Law enforcement authorities proceeded from the fact that the norm contained in the manual is intended to prevent the establishment of a monopoly on technical solutions through trademarks, which, in essence, is the block [5].
One might conclude that LEGO's cunning move failed, but this was not the case; legal trademark protection was revoked only in relation to certain products and only in the territory of the European Union.
For example, trademark No. 578936 [6] is registered in Mexico:
Figure 2. Trademark No. 578936
Trademark registered in the UK No. UK00908886582 [7]:
Figure 3. Trademark No. UK00908886582
Benelux Trademark No. 856556 protects the discolored image of the block [8]:
Fig. 4. Trademark No. 856556
In Russia there are three trademarks for LEGO blocks in relation to games, toys and their parts, and construction toys are not excluded from the scope of legal protection:
Fig. 5. Trademark No. 143051
Fig. 6. Trademark No. 203932
It is important to note that registering a trademark that includes a block does not mean that no one can make building blocks using LEGO technology. LEGO technology was previously protected by a patent, which became public domain, i.e. the technology can be used by anyone.
A trademark provides legal protection only for the use of the block to individualize goods. The above means:
First, if the trademark is represented in the form of the external parts of the block, then use of the internal part is not use of the trademark. For example, in this image, protection extends to the smooth sides and to the protruded sides.
Secondly, the trademark must be used specifically to individualize goods, for example, in advertising or by applying an image of a block to packaging. The use of a block for purposes other than individualization of goods does not entail a violation of trademark rights, for example, by producing blocks and making construction sets from them.
List of sources:
1. https://www3.wipo.int/madrid/monitor/en/showData.jsp?ID=ROM.1006003
2. https://euipo.europa.eu/eSearch/#details/trademarks/000107029
3. Page 1 Case Comment Lego Brick by Florian Traub / URL: https://www.country-index.com/articles/article_83.pdf
4. Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark.
8. https://www.boip.int/nl/merkenregister?app=%2Fitem%2Fbx547540
