3D trade mark protection for Lego bricks?

The Court of Justice of the European Union (EuGH) had to decide the interesting question of whether the inventor of a technical solution such as that of the Lego brick could extend the patent protection duration beyond the stipulated 20 years by registering his invention as a 3D trade mark.

The Lego company had protected its building bricks as a patent. After the expiration of the 20-year protection period, Lego attempted to register the following building brick with the Office for Harmonization in the Internal Market as a 3D trade mark, which initially succeeded. At the request of a competitor, the registration was subsequently deleted. The Lego company lodged an appeal against this deletion, which was now to be decided by the Court of Justice of the European Union.

Decision of the Court

The Court of Justice of the European Union decided by means ofJudgment of 14.09.2010 – Az. C-48/09 P that the Lego brick was not entitled to trade mark protection on account of absolute grounds for refusal of registration.

The highest European court argued that the form of the Lego brick merely embodied the technical solution developed by the manufacturer and patented at its request. If protection of this form as a trade mark were registered after the expiration of the patent, the ability of other companies to use this technical solution would be substantially restricted indefinitely. In the system of intellectual property rights as it has been developed in the Union, however, technical solutions are only protectable for a limited period, so that they can subsequently be used freely by all economic operators.

However, the court expressly left open whether the Lego company would be left without protection against imitation by competitors following the judgment of the EuGH.

Conclusion

An extension of the statutory protection periods for patents through the 'back door' of a three-dimensional trade mark application is not possible. However, if a company is faced with competitors after the expiration of the protection period who copy both the form and the technical solution of the respective products, the inventor may possibly take action against the competitor on the basis of the principles of unfair competition.