Part III: Trade Mark Concepts #Shapes #Lego

In Part II, we had dealt with the case of Koninlijke Philips v. Remington.

Here, we shall deal with new problems that came up in the Lego case.

The basic question is pretty straightforward:

Is the shape mark produced below a valid trade mark?

The Relevant Provision

Council Regulation (EC) No. 40/94 of 20 December 1993


  1. The following shall not be registered:

(e)       signs which consist exclusively of:

(i)   …; or

(ii)  the shape of goods which is necessary to obtain a technical result; or

(iii) …;


Background Analysis

A trade mark serves to help a consumer identify a product’s origin.

A patent, on the other hand, protects the rights of an inventor over his invention.

Patent law aims to cause maximum innovation, by incentivizing innovators through giving them protected rights over their inventions, while also simultaneously making sure that other innovators have access to such inventions after a certain prescribed duration. The patent regime views this balancing act as essential for furthering innovation.

If inventors were given rights over their inventions for eternity, innovation would be hurt over the long run as other inventors would not have the necessary access to build over prior inventions.

Trade mark law, on the other hand, provides protection, subject to certain conditions, for eternity. Therefore, if an invention were to be somehow protected through trade mark, instead of a patent, then the owner of such a mark would gain an eternal monopoly over the invention, thereby, failing the purpose of patent law and also gaining an unfair advantage over his competitors.

This brings us to provision 7(1)(e)(ii). 

In order to ensure that trade mark law doesn’t encroach into the domain of patent law, the said provision prevents undertakings from registering such marks which consist exclusively of a shape that is necessary for causing a technical result. 

Now, let us look at the procedure that courts follow for determining whether a shape falls under the prohibition of 7(1)(e)(ii)This procedure has backing in case law (e.g. Philips, Lego, Hauck):

First, courts identify the “essential elements” of the shape.

Second, they check if all these identified “essential elements” serve to cause a technical result.

Only if all the “essential elements” cause a technical result, will the mark be barred.

As long as there is at least one “essential element” which is fanciful, capricious or arbitrary, the mark can be registered because in such an event, competitors can simply discard the arbitrary element and make use of the functional elements of the shape in their product. Hence, no deleterious effects on competition are caused through registration of such marks.

One can root this analysis in the statute from the word “exclusively” in 7(1)(e).

Though courts can also choose to adopt the alternate procedure of analysing the overall impression of the shape, instead of breaking the shape down into “essential elements”, I haven’t come across any judgment that has used it as yet.

With this background understanding, let us delve into the issues.

Issue I: Relevance of alternate shapes while assessing a shape’s functionality.

Issue II: Method for identifying “essential elements” of a shape mark.

Issue I

The issue basically comes down to how you interpret the word “necessary” in:

the shape of goods which is necessary to obtain a technical result”.

Lego chose to interpret “necessary” as meaning absolutely essential or indispensable, instead of interpreting it as meaning needed (not absolutely needed).

Lego argued that the objective of provision 7(1)(e)(ii) was to prevent a monopoly and consequently, the fact that there were other shapes that could be used to achieve the same technical result would mean that registration of the shape mark under discussion would not result in a monopoly.

Hence, Lego argued, that the mark would not be hit by the prohibition under 7(1)(e)(ii).

The court rejected this argument, and in my opinion, rightly so.

It might seem, at first glance, that Lego’s arguments have weight.

One might possibly argue that the existence of other shapes for acquiring the same technical result would allow competitors to make use of other shapes and hence, allowing ownership over one such possible shape hardly provides the trade mark owner with an unfair advantage.

Let us have a closer look.

Let us consider a hypothetical, wherein Lego’s arguments are accepted.

Suppose there are three possible shapes that could achieve a particular technical result.

Firstly, the court will have to ascertain beyond doubt that all three shapes are equally proficient at enabling said technical result. Otherwise, competitors might be left with shapes of lesser suitability, thereby, providing the mark owner with an unfair advantage.

I submit that an assessment to determine whether all the shapes are equally suitable is almost impossible. We need to understand that products respond to varying conditions and requirements. It is unreasonable to require courts to foresee all possibilities and accordingly come to a conclusion as to whether all possible shapes are equally suitable.

Secondly, even if we were to assume that the court somehow came to a conclusion regarding the shapes being equally suitable, only the initial applicants will reap the benefits of trade mark ownership. Because after protection of the first two shapes, the third shape will not be open for registration as it would remain the sole possibility for achieving said technical result.

Therefore, only the owners of the first two shapes will be able to identify themselves through a shape, while competitors will be shut out. This again would lead to an anti-competitive atmosphere.

Given these difficulties affiliated with a world wherein Lego’s arguments were accepted, I believe that the court was correct in holding against Lego’s reasoning.

Issue II

We have already look at how courts go about checking if a shape is exclusively functional (“essential elements” or overall impression as a whole).

Lego argued that “essential elements” were to be identified from the perspective of consumers. That is, those elements are to be identified which a consumer sees as significant.

The court rejected this argument and held that at best, consumer perspective could only be one of the factors that could influence the identification of “essential elements”, but couldn’t be decisive.

Furthermore, the court held that the factors are to “be based on a detailed examination in which relevant criteria of assessment are taken into account, such as surveys or expert opinions, or data relating to intellectual property rights conferred previously in respect of the goods concerned

We shall deal with identification of “essential elements” in greater detail in a later part of the series.

Coming up

The Hauck case. Click here.

Chief Reference

The Judgment.

Image from here.


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