LEGO LOOSES TRADEMARK BATTLE

2nd UPDATE: EU Court:Lego Red Brick Trademark Not Registrable
By Mike Gordon Of DOW JONES NEWSWIRES

LUXEMBOURG (Dow Jones)--Danish toy brick maker Lego Juris A/S has failed in its bid to overturn a European trade mark decision canceling European trade mark protection for its standard 2 by 4 red Lego brick in a Tuesday ruling of the European Court of Justice.

"The Lego brick is not registrable as a community trade mark," the court said in a statement. "It is a sign consisting exclusively of the shape of goods necessary to obtain a technical result," it added.

The toy brick company had brought the action to overturn a lower court ruling that upheld a decision by the European trade mark office, called OHIM, to cancel its 1999 registration of the red brick.

OHIM had taken this step after Lego competitor Mega Brands, maker of Mega Bloks, requested its cancellation. Mega Brands argued that the trade mark office had wrongly granted Lego a registration, as it contested that European Trade Mark law precluded registering such a shape.

Lego appealed to the Court of First Instance, arguing that the law did permit the registration. The CFI rejected its appeal.

Lego made a further appeal to the European Court of Justice in 2008, arguing that there were legal errors in the CFI's interpretation of the European trade mark legislation.

Lego's lawyers argued that the CFI's interpretation would "preclude any shape which performs a *Violation*303* from trade mark protection." They argued that the court applied the wrong criteria to identifying essential characteristics of a three-dimensional trade mark, and applied the wrong test to determine whether the Lego brick was "functional."

The Court suggested however that Lego's position cannot be defended by trademarking the red brick, but could be examined as a case of unfair competition, which was in this case outside its scope.

"We experience that consumers, when they see a studded brick, whether its Lego or not, expect it to be a Lego brick; so, in order to not confuse and mislead consumers we feel that we have the right to register a trademark," Charlotte Simonsen, Lego's Head of corporate communications told Dow Jones Newswires. "It's about how you can use the shape as a trademark," she added citing Coca-Cola Co.'s registration of the coke bottle and chocolate manufacturer Toblerone's trademark of the shape of their chocolate bars.

The ECJ's ruling is in line with a legal opinion issued by Advocate General Paolo Mengozzi earlier this year, who recommended the court dismiss Lego's appeal, finding that none of its arguments were founded.



-By Mike Gordon, Dow Jones Newswires; +352 691 180 766; mgordon.dowjones@gmail.com