In today's fast-paced and competitive toy industry, intellectual property and brand recognition are key to survival and growth.
Recently, the Court of Justice of the European Union in Luxembourg ruled on Bluebrixx's application to invalidate the LEGO Minifigure 3D Alliance trademark.
Since it was first introduced in 1978, the LEGO company has long used its iconic onesMinifigures(minifigures) as part of its products.
With their unique image and interchangeable design elements, these have won the love of countless children and ** around the world, and have become an iconic symbol of the LEGO brand.
In order to protect their designs from imitation or copying, the LEGO Group has applied for and obtained a trademark for the 3D shapes of these minifigures in the European Union.
However, in the process of preserving this iconic image,The LEGO Group has also faced challenges and controversies from all sides
In 2000, the LEGO Group registered its minifigure design3D Alliance Trademarkto prevent other companies from manufacturing similar products.
A 3D Union trademark is a form of trademark registered within the European Union that protects the three-dimensional shape of a product or packaging. This type of trademark is designed to protect and distinguish goods or services**, and when the shape of a product or its three-dimensional design is sufficiently distinctive and distinctive, it can be registered as a 3D Alliance trademark, thus providing legal protection to the registrant against unauthorized copying or use of the same or similar shape.
BB Services GmbH, which owns building block brands such as Bluebrixx and Modbrix, filed an application with the European Union Intellectual Property Office (EUIPO) to invalidate the trademark.
Their reasoning is that the design of the LEGO minifigure is purely based on its technical function, and under EU law, the shape of the purely technical function cannot be registered as a trademark.
Prior to this, several manufacturers had tried to revoke the 3D trademark protection of LEGO minifigures. Among them, Best-Lock tried between 2013 and 2016, but it was unsuccessful. In light of some recent rulings relating to other toys, bluebrixx sees grounds for resubmitting a repetition application.
However, on June 25, 2021, the EUIPO rejected the application in its entirety.
Subsequently, bluebrixx appealed the decision on 3 August 2021, but in March 2022 the appeal was also rejected in its entirety.
In both cases, the EUIPO considered that bluebrixx had failed to sufficiently demonstrate that the mark was determined solely by the type of goods, i.e. that it could only be manufactured or displayed in a known and protected form.
Back in August 2022, the same issue was partly involved in the dispute between the LEGO Group and the German toy company Steingemachtes, when the court only treated the LEGO minifigures and the relevant instances of QMAN, Linoos and COGO as dolls rather than building blocks.
Considerations such as joinability were not considered important by the then District Court of Düsseldorf, and the EUIPO and its Appeals Board took a similar view in the case.
Unable to accept the EUIPO's decision, bluebrixx eventually took the agency to the Court of Justice of the European Union.
BB Services GmbH has filed an application to invalidate the EU trademark (registration number 50450), which has been registered since 18 April 2000.
They assertedThe trademark is registered only because of the natural shape of the goods themselves and is necessary for the purpose of obtaining a technical result, so it should be considered invalid according to the regulations(Pursuant to Article 7(1)(e)(i) and (ii) of EC No 40 94, now EU Regulation 2017 1001).
The applicant, BB Services GmbH, asked the court to set aside the previous decision and invalidate the mark, while the EUIPA and Lego Juris A S requested the court to dismiss the application.
About two weeks ago (early December 2023), the European Court of Justice (EUG) ruled that BB Services GmbH's appeal was dismissed, upholding the validity of the LEGO minifigure's 3D Alliance trademark.
The Court held thatWhile the LEGO minifigure contains technical features, its overall design is original enough and recognizable to the brand
The detailed decision of the European Court of Justice shows that the judges, in considering the ruling, specifically evaluated the key components of the LEGO minifigures and their technical characteristics.
In the end, the court upheld the EUIPO's decision, refused to invalidate the trademark, and demanded that BB Services GmbH bear the costs of the proceedings.
Validity of the trademarkis the core controversy of this case.
Some competitors believe that LEGO minifigures are designed to be functional and that they are shaped to be compatible with the LEGO system.
According to EU law, a shape cannot be registered as a trademark if the necessity is purely due to its technical function.
As a result, competitors argued that the 3D shape trademark of the LEGO minifigure was invalid.
It is important to note that BB Services GmbH's trademark cancellation application was initially filed against all three registered classes (Class 9: decorative magnets, computer games, computer games that can be used, and data and information contained therein).Class 25: Clothing, footwear, headwear;Class 28: games, toys).
For Classes 9 and 25, the Court immediately dismissed the requests, as in these areas it did not consider necessary to design the same product as the LEGO minifigure and found that there was sufficient design freedom. Both categories of litigation were found to be untenable because Bluebrixx failed to provide reasonable grounds for deletion.
In the case of category 28, the European Court of Justice has taken a more nuanced approach.
The judge confirmed that the Appeals Board had correctly considered that the figure in question was a toy figure under category 28 "games and toys", but noted that it was necessary to confirm that the figure was also a "brick figure" compatible with the LEGO Group brick system and belonged to a commodity subclass under "games and toys".
This is the first time that the Supreme Court has confirmed that the minifigure is not just a doll, but a building block figure, a point that the EUIPO has denied in its reasoning.
The Court's judgment was clearly different from the agency's assessment, and in its reasons for decision, it pointed out that it had erred in its assessment that the aspect of the minifigure as a building block figure should also be taken into account.
Coldplay also briefly read the judgment document (you can click "Read the original article" at the end of the article to see the English content), and sorted out the following key issues involved:
1: The essence of the commodity
The court first considered the nature of the merchandise, i.e., whether the minifigure was merely a doll in a "game and toy" or as an "interlocking construction doll" that could be compatible with other LEGO modules.
The court ultimately found that the minifigure had a dual nature, being able to be used both as a doll on its own and as an interlocking construction doll compatible with other LEGO components.
2: Key features of the trademark
Whether the key features of the mark are limited to the head, body, arms and legs that give it a humanoid appearance, or whether it also includes more technical elements such as bulges on the head, hooks on the hands and hollows in the back of the feet and legs.
The court held that these technical features were also key features of the minifigure and were essential to its function as an interlocking construction doll.
3: Whether the shape originates from the essence of the commodity
The court considered whether these characteristics were derived from the essence of the goods themselves.
The court held that while certain features (e.g., head and body shape) may be derived from the doll's natural shape, other technical features (e.g., connecting parts) provide technical results beyond the purely doll's function.
4: Whether the shape is necessary to obtain the technical result
The court considered whether the shapes were necessary in order to obtain a particular technical result.
While it is true that some of the features of the LEGO minifigures were designed to achieve interlocking and modular design, the Court held that there were also other non-technical, decorative or imaginary elements that also constituted the key features of the mark and that were not necessary to obtain the technical result.
Put simply, the court found that while some parts of the minifigure were indeed designed for technical functionality (such as arm and leg mobility), the overall design contained enough originality and brand recognition to go beyond purely technical functionality.
In summary, although the Court found certain errors in the evaluation of the nature and key features of the mark by the EUIPO, it ultimately held that the mark was eligible for registration because at least one of the key features was not necessary to obtain the technical result. Accordingly, the Court dismissed all of BB Services GmbH's claims.
Although the Court has largely upheld the EUIPO's arguments, it has also made some fundamental rulings that may not be satisfactory to the LEGO Group because of the CourtFor the first time, the specific characteristics that make up a LEGO minifigure have been clarified
In its judgment, the court notedThe barrel-shaped head, the short, square neck, the trapezoidal, flat and square body, and the special shape of the arms, hands, legs, and feet are seen as characteristic of the LEGO figures
Despite the technical limitations, the court held that these features had some freedom in design. Therefore, the judge granted recognition of the Lego trademark to a certain extent.
In its reasons for decision, the Court also stated that "it must be recognized that the protrusions on the top of the head of the person in dispute, the handshake and the holes on the back of the legs and under the feet, given their nature as 'building block figures' and their technical functions – constructability and modularity – are important features of the trademark." These characteristics proved to be very important for the compatibility of the character and its suitability for use in combination with other goods. ”
This may have made LEGO's representatives nervous in court, as the judge described the key features that make up the minifigures, which the company previously preferred to keep secret.
In addition, the European Court of Justice once again criticized the decision of the EUIPO, arguing that it had not adequately taken into account the above-mentioned points. This basically means that these points are technical and should not be used to evaluate a trademark.
However, the EUIPO did confirm another decision, which was further highlighted by the Court:LEGO's trademark does not give it the right to prohibit other manufacturers from selling brick figures that are compatible with the system's technology but have a different appearance than the registered trademarkIn addition, the possible compatibility of toy figures with any building block system should not be monopolized in any way in the sense of trademark law.
This verdict may be particularly important for the LEGO Group, as it may be in the futureDramatically increases the difficulty of preventing other manufacturers from producing similar figures
This is the first time that a LEGO minifigure has been defined by a court, while illustrating the criteria that are not typical for these minifigures, which are typical of brick characters.
Other manufacturers can refer to these standards in the future.
These rulings strengthen the protection of the LEGO Group's intellectual property rights, ensuring that its innovations and designs are recognized and protected. Not only does this help LEGO maintain the uniqueness and competitiveness of its products in the market, but it also encourages other companies to invest in design and innovation, as they can see strong intellectual property protection.
LEGO minifigures are recognized as unique and iconic, influencing standards within the toy industry, and other companies may need to be more careful to ensure that their product designs do not infringe on LEGO's trademarks.
This decision will also have an impact on LEGO's competitors, especially those who may rely on similar designs to attract consumers. They may need to re-evaluate and adjust their product lines to avoid potential legal risks.
Especially for many domestic building block brands, the design of the minifigure will always be a sword of Damocles hanging over the head.
At the same time, these judgments set a precedent for similar cases in the future, providing guidance to other companies on how to protect their ideas and designs. The results of these cases will be cited as a reference for similar disputes in the future.
Overall, these rulings will have far-reaching implications for intellectual property protection, the competitive landscape of the industry, consumer perceptions, and more, and could have important implications for toys and other creative industries.
Reference: Curiaeuropa.eu、promobricks