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Can you trade mark the shape of a product?

This article examines the recent EU decision declaring invalid a trade mark for the shape of a lego brick.

A Community Trade Mark is valid in all countries of the EU and may consist of any sign that is capable of being represented graphically, including the shape of goods.  However, it is not possible to register a mark which consists exclusively of the shape of goods which is necessary to obtain a technical result.  This restriction was tested in a recent European case involving the shape of lego bricks.

Lego Juris A/S was the owner of a Community Trade Mark consisting of the three-dimensional shape of a red lego brick.  Mega Brands Inc. applied to have Lego’s trade mark declared invalid on the basis that the shape of the brick was necessary to obtain a technical result i.e. it had to include two rows of studs on the upper surface of the brick in order to fit with other lego bricks.

The European Courts agreed with Mega Brands and declared Lego’s trade mark invalid and dismissed Lego’s appeal.  The Courts held that the presence of minor arbitrary elements in a three-dimensional sign, all of whose essential characteristics were dictated by the technical solution to which the sign gave effect, did not alter the conclusion that the sign consisted “exclusively” of the shape of goods which was “necessary” to obtain a technical result.   The Courts also confirmed that the existence of alternative shapes achieving the same technical result was irrelevant to the assessment of a shape’s functionality and did not prevent a shape from being refused registration.

The Courts held that the object of the restriction is to prevent trade mark law granting a monopoly on technical solutions or functional characteristics of products.  In light of the decision in this case, obtaining a trade mark registration for a product shape is likely to be difficult.