LEGO, an (un)happy end

Just one year after the German Federal Court (BGH) ruled about the trade mark claims by LEGO for its building bricks, the European Court of Justice (“ECJ”)  in its judgment of this week picks up a similar argument to finally refuse trade mark protection under community trade mark law for the famous LEGO bricks. The shape of the LEGO brick, which gives its characteristic appearance, is only determined by its technical function and thus trade mark protection is not feasible for an absolute ground for refusing (Article 7 (1) e) (ii) of the Council Regulation (EC) No 40/94 on the Community trade mark).

A short history of the famous toy makes the main argument of the ECJ as well as the German Federal Court even more comprehensible.  In 1949 Godfred Kirk Christiansen first sold the LEGO Automatic Binding Brick. A rectangular Block with eight studs on its upper site and a hollow bottom. This design allows first a binding between two building bricks, but it was only a loose binding. Not until 1958 the formerly hollow bottom side was heavily improved by providing it with small tubes which effect a strong clamping to the stubs. This strong clamping effect accounts for the uniqueness of the LEGO-Bricks: The ability to build up stable constructions even made of hundreds (or thousands, or ….) bricks. The LEGO Brick was first patented in 1958. Due to some slight further developments of the brick, which were also patented, the term of protection ended not until the early nineties, while the main design elements of tubes and stubs constantly remained until today.

Since than the LEGO Group has been faced with strong competition. LEGO lost its uniqueness. The amendments of European Trademark Law in 1993 might appeared to LEGO as a straw to clutch at. The new Council Regulation (EC) No 40/94 of December 1993 on the community trade mark provides trade mark protection to any signs capable of being represented graphically including its three-dimensional shape. Thus, LEGO applied the brick design for trade mark protection, an intellectual property right which an (at least potentially) unlimited term of protection. The shape was finally registered in 1999. First legal disputes about the brick designs of competitors, which also comprise stubs and tubes to effect a clamping but with different shapes in detail starts even in 1999.

The recent judgment of ECJ defines the distinction between the application range of technical property rights (such as patents) and the application range of trade mark law even more precise. According to the ECJ, there is no room for an overlapping of both IPRs. That is a good thing for two reasons. First, the term of patent protection is founded by providing a well-balanced trade-off between the interest of the innovator in the protection of its innovation efforts and the interest in a free competition. While giving the innovator the chance to get its revenues the time limit does not harm the innovation system as more as it is necessary but even fosters innovation. The prolongation of the term of protection of the technical property right by extraneous means of trade mark law should therefore be omitted.  That is especially true for situations where there is no innovation to protect but just the market leadership.

Second, we should draw a lesson from this judgment: Even a clever application of law could not compensate for a lack of real innovation.  The more “political” side of this legal epos is that the impression might exist in the judge’s minds that LEGO was in fact trying to get a protection which by definition is unlimited in time (trademark versus patent or copyright protection). That may have triggered the idea that although successful products must have a reasonable time to earn back the innovation investments, there should also be a limited time of legal protection for industrial designs like the LEGO bricks.

Stephan Dorn

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