Lego Juris v OHIM: Why the Classic Lego Brick Could Not Be an EU Trademark

By Imaduddin

Photo: _Alicja_ / Pixabay

The eight-stud toy brick is one of the most recognisable shapes in the world. For more than a decade, the Lego group tried to keep it as an EU trademark, and a Canadian rival tried to take it off the register. In 2010 the Court of Justice of the European Union settled the matter, and its reasoning still defines how Europe treats functional shapes.

The registration and the challenge

According to the Court of Justice's judgment, Kirkbi A/S, Lego's predecessor in title, applied on 1 April 1996 to register the shape of a red toy brick with two rows of studs as a Community trade mark. The mark was registered on 19 October 1999. Two days later, Ritvik Holdings, later Mega Brands, the maker of Mega Bloks, applied to have it declared invalid.

The challenge relied on the rule that a sign consisting exclusively of the shape of goods which is necessary to obtain a technical result cannot be registered. Ritvik argued that the brick's studs and tubes exist so that bricks can be stacked and locked together, which is a technical function, not a badge of origin. The Grand Board of Appeal of the EU trademark office, then known as OHIM, agreed in a decision of 10 July 2006, and the General Court upheld that decision in 2008.

The Court of Justice ruling

On 14 September 2010, the Grand Chamber of the Court of Justice dismissed Lego's appeal in Case C-48/09 P. The court explained that the exclusion applies when all the essential characteristics of a shape perform a technical function. The presence of minor arbitrary features does not save the mark. It also rejected the argument that a shape can be registered simply because other shapes could achieve the same function.

The court noted that the most important element of the Lego brick, the two rows of studs, serves to connect bricks, and that the other elements were functional too, apart from colour. A shape like that is a matter for patents, which last for a limited time, not trademarks, which can be renewed indefinitely.

Why the ruling matters

The Lego case draws a clear line between rights. Once the patents on a technical design expire, the design enters the public domain, and a company cannot use trademark law to extend that protection for ever. Lego still owns strong word marks, logos and copyright in its products, but not an EU trademark in the basic shape of the brick.

The Indonesian angle

Indonesia protects technical solutions through patents and the appearance of products through industrial design registrations. Since the Job Creation law, Article 20(g) of Law No. 20 of 2016 on Marks and Geographical Indications, added by Law No. 6 of 2023, also bars the registration of a mark that contains a functional shape. The law does not define the term, and we are not aware of an Indonesian court decision applying a functional-shape exclusion to a three-dimensional mark in the way the Lego case did. Applicants filing 3D marks at the DJKI should check whether the shape's main features are functional and consider patents or industrial designs as well.

Sources

• Court of Justice of the European Union (Grand Chamber), judgment of 14 September 2010, Lego Juris v OHIM, Case C-48/09 P (EUR-Lex)
• WIPO Lex, Judgment of the Court (Grand Chamber) of 14 September 2010, Lego Juris A/S v OHIM, C-48/09 P
• JDIH BPK, Law No. 20 of 2016 on Marks and Geographical Indications (statute text and status, in Indonesian)
• JDIH BPK, Law No. 6 of 2023 on Job Creation (statute text, in Indonesian)