CABINET CHAILLOT

Validity of 3D trademarks for LEGO figurines confirmed

The General Court has just handed down two judgments, T-297/22 and T-298/22, confirming the validity of the three-dimensional trademarks that LEGO had registered to protect the shape of its figurines.

In 1996, LEGO had registered several European Union trademarks relating to the appearance of these figurines. The trademarks were registered after it was demonstrated that the distinctive character of the trademarks had been acquired through use. Indeed, when you see the figurines with cylindrical head and trapezoidal torso, you recognise a LEGO figurine. The trademarks were registered in 2000.
In 2020, a company BB requested cancellation of two of these trade marks, those representing the LEGO figurine, with or without the protrusion on the head, on the grounds that these trademarks were not distinctive and that the shape of the figurines was dictated by the technical function of the product. The Cancellation Division dismissed the request and the Board of Appeal confirmed the decision. BB brought the case before the EU General Court.
On 6 December 2023, the Court confirmed the validity of the 3D trademarks.
Article 7(1)(e)(i) EUMR, the two trademarks do not consist exclusively of the shape imposed by the very nature of the goods.
The Court recalls that this article cannot apply when the trademark "relates to a product shape in which a non-functional element, such as a decorative or imaginative element, plays an important role".
In the present case, the Board of Appeal had identified as essential not only technical but also ornamental and fantasy elements for each toy at issue, in particular a cylindrical head (with eyes and mouth; no nose or ears), a short rectangular neck, a trapezoidal torso, arms slightly inclined at the elbow ending with hands in the shape of hooks, legs with bulges under the feet and two round holes at the back.
The Court concluded that "at least one essential characteristic of the goods at issue is not inherent to its generic function as a toy figure or as an interlocking building function" and confirmed the registrability of the contested trademarks.

Article 7(1)(e)(ii) EUMR, the two trademarks do not consist exclusively of the shape of goods necessary to obtain a technical result.
The Court recalls that once all the essential characteristics of the shape have been identified, the EUIPO must verify whether all those characteristics correspond to the technical function of the product at issue and points out that « the existence of other shapes which could achieve the same technical result » is not sufficient to deprive such a trademark of validity.
Thus, the cylindrical shape of the head, the short, rectangular shape of the neck, the trapezoidal shape of the torso and the shape of the arms with hooked hands are again described as essential " decorative and imaginative " characteristics, making the two contested trademarks suitable for registration.

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