LEGO Loses Trademark Dispute in the EU Over Toy Brick ShapeOn November 12, 2008, the European Court of Justice ruled that Lego toys could not be protected by trademark because their shape serves a "technical purpose". Here is a link to the case: http://www.bloomberg.com/apps/news?pid=20601127&sid=adwBns.oIs5A&refer=law
Lego had argued that the knobs on the top of the bricks made them "highly distinctive" and thus eligible for trademark protection.
EU trademark law "precludes registration of any shape" that is "sufficient to obtain the intended technical result" (even if the same result can be achieved by other shapes) according to the Court.
The Court said that Lego's building blocks consist exclusively of a shape needed to serve a function—essentially that the shape was functional and thus could not be protected.
If this case were brought in the US under the Lanham Act the Courts in the US would have found similarly to the European Court of Justice because "functional" aspects are not protected by trademark law in the US. Trademark law does not want to create a monopoly over a functional aspect of a product; that is more for the realm of patent law. The proper section relating to Functionality would be §2(e)(5) of the Lanham Act which says that functional aspects are not protected. Trademark law wants to protect source identification, not the usefulness of the product. §2(e)(5) states that "No trademark shall be refused unless it consists of a mark which comprises any matter that as a whole is functional. Even if such functional features develop a secondary meaning they are ineligible for trademark protection."
Thus even if Lego could show that their products had developed a secondary meaning from their shapes and colors, they would not be successful because the shapes of the pieces are functional.
The court would likely look at 4 Factors when considering issue of functionality from In re Howard Leight Industries, LLC (2006). They would look at 1) the existence of a utility patent disclosing the utilitarian advantages of the design; 2) advertising materials in which the originator of the design touts the design's utilitarian advantages; 3) availability to competitors of functionally equivalent designs; 4) facts indicating the design results in a comparatively simple or cheap method of manufacturing the product.
If Lego had a utility patent for the blocks this would weigh against giving them trademark protection. If there was evidence Lego had advertised that its product was unique because of the shape of the blocks this would also weight against them. Court probably wouldn’t look to see if there were alternative designs because they would find this was a functional feature of the product.