Lego’s attempt to preserve their trademark protection in Switzerland has ended up in vain. Lego trademarked the shape of bricks in 1999 which was opposed by Mega Brands, Inc. shortly afterwards. Lego had to seek out some kind of protection because their patent for the shape of Lego bricks had already expired way back in 1978.
Lego applied for European Community trademark for representation of one of their toy brick in 1996. The mark was registered in 1999 under ‘games and playthings’ but it was immediately opposed by Mega Brands, Inc. They were alleging that this registration was invalid with relation to construction toys under article 2 (b) of Switzerland Trademark Law.
Article 2 (b) of Switzerland Trademark Law states:
“(b) Shapes that constitute the nature of the goods themselves or shapes of the goods or of their packaging that are technically necessary.”
Community Trademark Office reviewed the complaint and following a decision made by European Court of Justice (ECJ) on Philips Electric razor declared the registration of Lego brick trademark invalid. After this Lego filed an appeal in the Grand Board of Appeal which was rejected. Then Lego, took their case into the European Courts.
WHAT LEGO CLAIMED?
Lego were claiming that their attempt to register the brick as a trade mark was justified because use of similar bricks by others will viva video app dilute their profits. They also provided survey reports which was showing that half of the customers were misled because while shopping they were thinking that they were buying Lego’s product but in reality they were purchasing competitor’s product.
WHAT COURT SAID?
The Court of First Instance rejected this argument in 2008, ruling that Community law prevents registration of any shape.
In 2008, the Court of First Instance rejected this argument, ruling that “in its essential characteristics, of the shape of the goods which is technically causal of, and sufficient to obtain, the intended technical result, even if that result can be achieved by other shapes using the same or another technical solution.” The Federal Supreme Court ruled on 3rd July, 2012 that the shape of Lego bricks is technically necessary and it cannot be protected under trademark protection, even if the shape is distinctive.
It’s a very good decision by the Federal Court because this will stop one technology from getting perpetuate protection. Companies have made it a strategy to first patent their invention and when it gets over than they seek other kind of intellectual protection. For e.g. Coke bottle which was first patented and when patent got over then they took trademark protection, copyright protection as well as design protection on the same. This just increase the time of protection and thus doesn’t allow the invention to come in public domain which is not a good practice.