General Court maintains the validity of Lego minifigures as EUTMs

In 1996, Lego filed two applications for 3D trade marks consisting of toy figures, one with a dub on the head (illustrating this post) and one without it. In 2000, both were registered as European Union trade marks (EUTMs) in Classes 9, 25 and 28. Registration was based on acquired distinctiveness.

In 2020, BB Services GmbH (‘invalidity applicant’) sought to invalidate both EUTMs. The invalidity applicant relied on two grounds: prohibition of registration of signs consisting exclusively of “shapes or other characteristics” resulting from the nature of the goods (Art. 7(1)(e)(i) of Regulation (EU) 2017/1001), and of “shapes or other characteristics” of goods necessary to obtain a technical result (Art. 7(1)(e)(ii)).

The Cancellation Division rejected the invalidity application. BB Services GmbH appealed but Board of Appeal (BoA) of the European Union Intellectual Property Office (EUIPO) also dismissed the invalidity application (R 1354/2021-5 and R 1355/2021-5).

First, the BoA reminded that Art. 7(1)(e)(i) and (ii) of Regulation (EU) 2017/1001 have no retroactive application. Considering that the two EUTMs were applied for in 1996, Art. 7(1)(e)(i) and (ii) of Regulation (EC) No 40/94 would be applicable instead. This means that only the functionality of shapes could be examined: “another characteristic” was added as part of the EUTM reform.

With regard to prohibition of shapes resulting from the nature of the goods (Art. 7(1)(e)(i)), the BoA started by determining the nature of the goods as a toy figure included in the category of games and playthings. The BoA rejected the invalidity applicant’s reasoning that it was rather an interlocking building figure (a reasoning, on which the invalidity applicant built its argument that the goods in question were part of Lego’s modular building system).

The BoA then defined the essential characteristics of the two contested signs. According to the BoA, several characteristics, essential to the signs, had decorative or imaginative elements. For instance, the toy’s trunk could have a rounded shape instead of the trapezoidal one. For Art. 7(1)(e)(i) to be applicable, the sign has to consist exclusively of shape resulting from the nature of the goods. According to the BoA, the existence of characteristics with decorative or imaginative elements showed that this was not the case.

With regard to prohibition of shapes of goods necessary to obtain a technical result (Art. 7(1)(e)(ii)), the BoA determined the goods’ function as being an object to play with. The BoA agreed that a Lego toy figure was compatible with the overall Lego’s modular system. Yet, other ways to play with the toy figure exist, without the figure necessarily being connected to the Lego’s universe.

According to the BoA, the invalidity applicant failed to prove that the signs consisted exclusively of a shape of goods necessary to obtain a technical result. The goods’ essential characteristics (head, body, arms and legs) only conferred the toy a human appearance. These characteristics are not exclusively necessary to allow the toy’s connection to other Lego products. In this regard, the Lego minifigures are different from the sole Lego brick that was invalidated as a 3D EUTM in the seminal Lego Juris case.

The validity of the two contested EUTMs was thus confirmed by the BoA. BB Services GmbH appealed both decisions to the General Court.

In this week’s rulings (T-297/22 and T-298/22), the General Court essentially sided with the BoA and maintained the validity of the two EUTMs. Certain errors of assessment have however been identified by the General Court.

With regard to Art. 7(1)(e)(i), the General Court notes that, while the BoA was right to identify the goods in question as toy figures, they also fall in the category of interlocking building figures (as sustained by the invalidity applicant). Certain elements of the goods may be assembled and disassembled, they have connectors that are compatible with other Lego elements.

Moreover, the BoA should have identified as essential certain characteristics brought up by the invalidity applicant: the protrusion on the head, the hooks on the hands and the holes at the back of the legs and under the feet. However, despite these errors of assessment, several essential characteristics are indeed decorative and imaginative: Art. 7(1)(e)(i) is not applicable to the two EUTMs.

With regard to Art. 7(1)(e)(ii), the General Court finds that the BoA was right to identify the goods’ function as the capacity for play. However, the goods at issue also have the function of being modular and interlocked with Lego’s building system, as sustained by the invalidity applicant.

Moreover, here too the BoA should have included additional essential characteristics into the analysis, such as the hooks on the figure’s hands. Yet, despite the existences of these additional traits, the BoA was right in affirming that not all essential characteristics are exclusively necessary to obtain the technical result. For instance, this is not the case of the cylindrical head or of the shapes of arms and legs. Art. 7(1)(e)(ii) is also not applicable to the two EUTMs and both EUTMs remain valid.

Our long-time readers might have a certain feeling of déjà vu. The two EUTMs have already been subject of an invalidity application from Best Lock Ltd. back in 2012, based on the same two grounds [T-395/14, confirmed by the Court of Justice in C-451/15 P and commented by The IPKat here].

In its 2022 ruling, the BoA reminded that the EUIPO had indeed already rendered a decision relating to the same subject and the same cause. The second challenge was only allowed to proceed because it was filed by a different applicant. At the same time, the BoA heavily relied on the General Court’s findings in the earlier T-395/14 ruling.

As Merpel noted in 2015, the only indent of Art. 7(1)(e) that has not been examined for Lego minifigures is the prohibition of shapes (and, though not applicable to pre-2017 EUTMs, also of other characteristics) which give substantial value to the goods (Art. 7(1)(e)(iii)). The EUIPO Guidelines consider that this prohibition may be applicable when the goods will be purchased primarily because of their particular shape or another particular characteristic. However, because the Court of Justice has rarely expressed itself on this indent, it is still unclear to an extent how relevant would reputation (of the trade mark itself or of its owner) be to this assessment [see also a recent Italian case on the Vespa motorcycle]. Could a Lego minifigure fall under this prohibition?