The court application was not for the right to manufacture and sell LEGO® bricks or other bricks but exclusively for the right to register a three-dimensional image of the red eight-stud brick as a trademark.
In a response to the court ruling Peter Kjær, head of the LEGO Group’s Intellectual Property Section, says:
“This was the court of final instance, and we have no option but to note the court’s ruling. The ruling has been given on the question of whether the brick is functional or not – and the court has concluded that it is functional. We have always disputed this – and continue to do so. In other court actions we have shown that bricks with virtually the same function can have other appearances,” he says, and continues:
“To demonstrate that it is incorrect that a brick must look like ours, LEGO employees have produced 25-30 different designs of prototypes and moulds, approx. half of which can be built together with our bricks. In this way we’ve shown that bricks with more or less the same function can certainly be designed in other ways, and it has been demonstrated that the alternative bricks are neither more expensive nor more difficult to manufacture.”
The ruling of the EU Court means that the LEGO Group is not permitted to claim exclusive right to the use of an eight-stud brick as a trademark.
The LEGO Group’s desire to register the brick as a three-dimensional trademark is not for marketing reasons alone.
“It is naturally a matter of concern to us that use of the brick by others can dilute the trademark. But the worst aspect is that consumers will be misled. Analyses show that 40-60% of shoppers believe they are buying a LEGO product when in fact they are purchasing a different product. Shoppers can see there is a different name on the box – but they believe it is a product line or company owned by us,” says Peter Kjær.
Court application in brief:
In 1996 the LEGO Group submitted an application for registration of the 2x4 brick as a three-dimensional trademark. The trademark was recognised not to be exclusively a functional device, and as a distinctive feature of LEGO toys it was registered with effect throughout the entire European Union in October 1999.
Shortly afterwards, the Canadian toy manufacturer Mega Bloks, Inc. (now Mega Brands), which manufactures bricks similar in appearance to bricks from the LEGO Group, applied to have the registration annulled. The Canadian company claimed that registration of the block’s form was a contravention of trademark legislation. In 2004 the EU Office for Harmonisation in the Internal Market (OHIM) in Alicante, Spain, ruled the LEGO Group’s registration of the LEGO brick invalid. In 2006 the OHIM Board of Appeal upheld the prior ruling, and in 2008 it was also upheld by The Court of First Instance of the European Communities in Luxembourg.
The Court of Final Instance in Luxembourg has now ruled that registration is invalid.