Judges knock down Lego's trademark case

For half a century it has formed the building block of playtime for millions of children across the globe, transporting them to fantastic castles, space ships and dolls' houses. Yesterday, European judges stripped the Lego brick of its trademark status, after a rival toymaker, Mega Brands, successfully appealed to the EU's trademark office.

The Canadian company, which markets a similar toy called Mega Bloks, argued that a brick was a functional, technical shape which could not be trademarked by any one company. The judges agreed and rejected Lego's application to have its trademark returned.

The Danish toy-maker's basic red plastic brick became a global phenomenon in the toy industry after its official launch in 1958. The company registered its three-dimensional 2x4 shape as an EU trademark in 1999.

The move triggered a challenge from Mega Brands, whose rival toy Mega Bloks had previously been legally pursued by Lego.

Fighting its case, Lego claimed that its iconic brick contained characteristics that set it apart from the regular shape used in industry, such as the design and size of the studs on top of the bricks. The company's lawyers also challenged the idea that such shapes should always be excluded from trade mark protection.

However, the Office of Harmonisation for the Internal Market (OHIM) ruled that Lego's two rows of studs on top of its bricks performed a "utilitarian function" and were not "for identification purposes in the trademark sense".

The judges ruled that keeping the Lego trademark on the basic brick design amounted to a monopoly on what was essentially a functional shape "necessary to obtain a technical result" and rejected Lego's claim that the company's competitors did not need to copy the shape of the Lego brick to achieve the same "technical solution".

The ruling allows competitors to continue selling building blocks which are similar to Lego's in the EU. Lego had submitted details of surveys showing that most consumers identified the plastic red brick with studs on top as its brand, and that consumer perception had to be taken into consideration.

But the judges ruled that consumer perception was not relevant to an analysis of the functionality of the design. EU trademark law "precludes registration of any shape" that is "sufficient to obtain the intended technical result", the court ruled, "even if that result can be achieved by other shapes".

A Lego spokeswoman, Charlotte Simonsen, said the company was disappointed with the ruling, and it would appeal at the European Court of Justice. "We at Lego are convinced in our belief that we are right in our views on trademark legislation," she said.

The toy maker, based in Billund, Denmark, began trading in 1932 in the workshop of carpenter Ole Kirk Christiansen as a sideline in wooden toys.