Case C-48/09, Lego Juris
As of 1989 it is possible to register as a trademark a sign representing the shape of a certain good. However, the protection of consumers through the creation of competitive markets requires limitations of the right to register such type of trademarks. Signs which consist exclusively of the shape of goods necessary to obtain a technical result cannot be registered as trademarks because if protected, they would prevent the creation by competitors of any goods with similar functionality, this way leading to a situation of monopoly.
On 1 April 1996 Lego submits an application for registration of a trademark for the class “games and playthings”. The sign submitted for registration shows the famous red building brick of Lego. Initially, OHIM registers the trademark but the registration is annulled later in response to an appeal brought by Mega Brands. Although the use of the sign led to its distinctiveness, the functionality of the shape makes it unsuitable for registration pursuant to Regulation 40/94.
The appeals of Lego against the decisions of OHIM and of the General Court resulted in the decision of the Court of Justice of the European Union (“ECJ”) of November 6th, 2010. The ECJ dismissed the appeal. It rejected Lego’s argument that the perception of the consumers should be taken into account when assessing the suitability of the sign for registration.
The ECJ ruled that the technical solution of the way of assembling the building bricks imposes the shape of the toy and therefore cannot be protected by a trademark. Should the sign representing graphically this shape be registered, all competition on the market of similar construction toys would be prevented. This would harm consumers because of the higher monopoly prices and decreased choice of toys, and probably indirectly because of the lack of incentives for improvement of the existing construction toys and for invention of new types of similar games. It is considered that the reward of the manufacturer which had discovered the respective technical solution (in this case – how to assemble building bricks in a convenient way for children) and which might have made a considerable investment with this regard, is provided by patent rules and should be only temporary. The protection that a trademark provides might continue for an indefinite period of time and result in monopoly revenues surpassing many times the initial investment made, thus unnecessarily hindering the healthy competition on the market. Furthermore, the ECJ reckons that after the expiry of Lego’s patent, its protection against manufacturers duplicating its building bricks in a way to benefit from Lego’s established reputation could be sought through the rules on unfair competition.
The ECJ drew the line distinguishing the right of trademarks from other IP rights and tried to find a balance between the necessity of static and of dynamic competition without entrusting the competent authorities dealing with IP matters with a task to assess the competitiveness of markets before registering certain three-dimensional trademark.
Линк към цялата статия на български език: ОГРАНИЧЕНИЯ В РЕГИСТРАЦИЯТА НА ТРИИЗМЕРНИ МАРКИ
 Lawyer at the Sofia Bar; antitrust analyst of mergers and acquisitions at the e-magazine ArbJournal.