Shape Marks: Guidance On Distinctiveness And Functionality

The acceptance of 3D signs as trade marks is well established, but the grounds for refusal, including whether the public considers 3D signs to be trade marks or whether they are "necessary" for a technical function of the product, continue to be disputed. Two recent cases offer further guidance.

Lego Manikin

On 16 June 2015, the EU General Court (the "Court") delivered a judgment on invalidity proceedings between Best-Lock (Europe) Ltd and Lego Juris A/S (Case T-396/14, Best-Lock (Europe) Ltd v OHIM - Lego Juris A/S). The case concerns the registration of Lego's manikin as a Community trade mark.

On 18 April 2000, Lego registered the 3D shape of its well-known manikin figure as a Community Trade Mark with the OHIM.

The registration was contested by Best-Lock which filed an application seeking a declaration of invalidity of the trade mark on the basis of Article 52(1)(a) of Regulation No 207/2009 of 26 February 2009 on Community trade mark (the "CTM Regulation"). Under Article 52(1)(a) of the CTM Regulation, read in conjunction with Article 7(1)(e)(ii) of the same Regulation, a Community trade mark will be declared invalid if it consists exclusively of the shape of goods which is necessary to obtain a technical result.

The Cancellation Division rejected the application and the OHIM dismissed Best-Lock's appeal. Best-Lock then brought the case before the Court. According to the Court, the technical result invoked by Best-Lock - the fact that the toy figure could be combined with other building blocks - was too general. The Court therefore held that Best-Lock had failed to show that any technical result could be attributed to the shape of the Lego manikin and had therefore failed to submit sufficient evidence contesting the interpretation or application of EU law made by OHIM. Since the Court's review is limited to a review of the application of law, it rejected the complaint as inadmissible.

In the process, the Court also gave guidance on the use of the terms 'exclusively' and 'necessary' under Article 7(1)(e)(ii) of the CTM Regulation. According to the Court, this provision ensures that shapes of goods which only incorporate a technical solution, and whose registration as a trade mark would therefore impede the use of that technical solution by other undertakings, should not be registered.

First, the Court held that the condition of 'exclusivity' is not satisfied in the case at hand as not all the essential characteristics of the manikin...