The General Court (Third Chamber) in Luxembourg has ruled that Lego's manikin shape CTM is valid. The good news for Lego follows the General Court's 2008 decision that its registration for its brick shape was invalid.
The finding that Lego's manikin shape is validly registered also follows the recent opinion from Attorney General Wathelet indicating that Nestlé's unbranded KitKat finger shape is invalid.
Lego Juris A/S has a CTM for the following three dimensional mark (no. 50450 ("the Mark")) for its 'manikin' figure:
The Mark is registered for goods in class 28 including 'Games and playthings; decorations for Christmas trees'.
Best-Lock (Europe) Ltd sought declarations of invalidity of the Mark in relation to the goods referred to above on grounds including the shape exclusions (Article 7(1)(e) of Regulation No. 207/2009 ("the Regulation").
The Office for Harmonisation in the Internal Market (OHIM) rejected Best-Lock's applications. Best-Lock's appeals reached the General Court (Third Chamber), which returned its decisions (T-395/14 and T-396/14) on 16 June 2015.
Does the Mark consist exclusively of the shape which results from the nature of the goods themselves?
Article 7(1)(e)(i) of the Regulation prohibits the registration of signs which consist exclusively of the shape which results from the nature of the goods themselves.
The General Court ruled that while Best-Lock asserted this ground, it failed to put forward any argument in its application to support its assertion, and it did not provide any reasoning to demonstrate that the Board of Appeal's rejection of its assertion was incorrect. Best-Lock's application had consequently not satisfied the minimum requirements of Article 44(1)(c) of the Rules of Procedure (see further below). Its challenge based on Article 7(1)(e)(i) was therefore rejected.
Does the Mark consist exclusively of the shape of goods necessary to obtain a technical result?
Article 7(1)(e)(ii) of the Regulation prohibits the registration of signs which consist exclusively of the shape of goods which is necessary to obtain a technical result.
Again, the General Court ruled that Best-Lock failed to adduce any evidence in its application to call into question the findings of the Board of Appeal in respect of this issue. Nevertheless, the Court took the opportunity to issue guidance on the interpretation of Article 7(1)(e)(ii).
The General Court ruled that the terms 'exclusively' and 'necessary' mean that the provision merely prohibits the registration of shapes which only incorporate a technical solution, and whose registration as a trade mark would therefore actually impede the use of that technical solution by other undertakings. The conditions of Article 7(1)(e)(ii) are fulfilled when all the essential characteristics of a shape perform a technical function. The presence of non-essential characteristics with no technical function is irrelevant in this context.
The Court evaluated the Mark as being a shape of a figure having a human appearance. The head, body, arms and legs were necessary for the figure to have that appearance and constituted the 'essential characteristics' of the Mark. Those elements of the shape simply conferred human traits enabling the figure to be used in a play context. This did not serve any technical function.
The graphical representation of the hands, the protrusion on the head and the holes under the feet did not constitute 'essential characteristics' of the shape of the Mark. Nor did they enable it to be known whether those elements had any technical function (and, if so, what that function was). Further, even if the shape of those elements did have a technical function (i.e. that of enabling them to be joined to Lego bricks) they could not be the most important elements of the Mark.
Therefore, there was nothing to permit a finding that the Mark consisted 'exclusively' of the shape of goods which is necessary to obtain a technical result, and so the challenge under Article 7(1)(e)(ii) failed.
Other grounds of challenge
Challenges that the Mark was devoid of any distinctive character (Article 7(1)(b)) and that it had been registered in bad faith both failed also.
Before the General Court, Best-Lock relied upon the evidence it had adduced during the invalidity proceedings before OHIM. It only made general reference to its arguments and evidence without providing any further detail. Best-Lock's failure to adduce adequate submissions and evidence in support of its assertions was a fundamental factor in the Court's decision-making process.
Pursuant to Article 21 of the Statute of the Court of Justice of the EU (applicable to proceedings before the General Court (Article 53 of said Statute)), and Article 44(1)(c) of the Rules of Procedure of the General Court, an application must state the subject matter of the proceedings and a summary of the pleas of law on which the application is based. The application must be sufficiently clear and precise to enable a defendant to prepare its defence and the court to rule on the application, where necessary, without further information.
The General Court ruled that general reference to other documents, even those annexed to the application, cannot make up for the absence of the essential arguments in law, which must appear in the application. Best-Lock's failure to adduce sufficient evidence in support of its assertions meant its appeal failed.
This is a stark reminder to ensure that in litigation before the European institutions and courts, each application must explain fully the arguments being adduced in support. The court cannot be expected to have read the arguments and evidence submitted at earlier stages of proceedings.