What does the ruling of Lego case mean for trade marking shapes?

Lego the famous Danish toymaker had tried to have its snap-together plastic bricks registered as an exclusive trademark in the European Union. The company had argued that studs on top of the bricks made them highly distinctive and, thus, eligible for trademark rights. It had initially managed to get the trade mark through OHIM but OHIM repealed its own decision after receiving objections from Canadian toymaker Mega brands.

ECJ Held

The ECJ ruling said: "The position of an undertaking which has developed a technical solution cannot be protected... by conferring a monopoly on that undertaking through registering as a trademark the three-dimensional sign consisting of that shape.

Siren Peermohamed, a lawyer at Harbottle & Lewis, said the court essentially ruled "it wasn't in the public interest that something that was purely functional should be able to be protected, because  it precluded people from using the same technical function."

Does this mean you cannot trade mark shape?

A distinctive shape can in principle be registered as a trademark, unless it is exclusively one which is necessary to obtain a technical result. This is where Lego's brick shape fell down, in contrast for example to the shape of the Coca-Cola bottle which has been registered

It can be argued that the court must have taken the view that all the essential characteristics of the Lego brick did perform a technical function - to enable bricks to be connected and stacked - even if other minor features did not, and this therefore precluded it from registration.

It has to be noted that Lego is not the only company to have its shape trade marks denied protection on these grounds ,there have been other company who have equally failed to obtain protection, for example dishwasher tablets and shavers too have faced similar objections.

The ECJ ruling in the Lego case effectively means that to trade mark a shape it needs to be unique and cannot function to achieve technical results, and  this ruling also demonstrates how difficult  it is to trade mark shapes.