Lego fail to register brick as trade mark

Lego has failed to register the shape of it's bricks as a trade mark.

UK and European trade mark law allows for shapes to be registered as long as the shape does not perform a technical function. The reasoning behind this is that such technical functions are covered by patent and design laws which are harder to register and offer stronger protection (albeit for shorter periods).

Lego filed it's application back in 1999 but their application was opposed and in 2004 was rejected by OHIM. The application then went before the OHIM Board of Appeal and finally the Court of First Instance (CFI) of the European Community. Lego held the view that: the rule on functionality was "not intended to exclude functional shapes per se from registration as a trade mark, but only signs which consist ‘exclusively’ of the shape of goods which is ‘necessary’ to obtain a technical result".

However the CFI stated: "The addition of non-essential characteristics having no technical function does not prevent a shape from being caught by that absolute ground of refusal if all the essential characteristics of that shape perform such a function," and went on: "In order for that absolute ground for refusal to apply, it is sufficient that the essential characteristics of the shape combine the characteristics which are technically causal of, and sufficient to obtain, the intended technical result, and are therefore attributable to the technical result...it follows that the Grand Board of Appeal did not err in considering that the term ‘necessary’ means that the shape is required to obtain a technical result, even if that result can be achieved by other shapes."

Lego have announced their intention to appeal the decision.