LEGO wrote:
Billund, Denmark, November 2008
To whom it may concern
Background: In 1996 the LEGO Group submitted an application for registration of a European three-dimensional trademark comprising the well-known LEGO 2×4 knob brick. According to EU trademark legislation the shape of a product or packaging may be registered as a three-dimensional trademark provided that such shape is capable of distinguishing the goods or services of one undertaking from those of other undertakings.
The LEGO 2×4 knob brick was registered with effect in the entire EU in October 1999. Shortly afterwards, Mega Bloks, Inc. (now Mega Brands Inc), the Canadian maker of building bricks of exactly the same appearance as those of the LEGO Group’s, requested cancellation of the mark. Mega Bloks claimed that the registration of the LEGO brick was against trademark legislation, because its shape is functional. A finding of functionality essentially means that the shape is necessary to achieve a technical result. . In 2004, the EU Office for Harmonization in the Internal Market (OHIM) in Alicante, Spain, which is an administrative body, ruled the LEGO Group’s registration of the LEGO brick invalid due to functionality. The LEGO Group appealed against the ruling but without success – in 2006, the OHIM Grand Board of Appeal upheld the prior ruling and the LEGO Group decided to appeal this ruling to The Court of First Instance. This recent ruling: The Court of First Instance of the European Communities in Luxembourg has now rejected the appeal of the LEGO Group, basically confirming that the LEGO brick is functional, and thus not eligible for trademark protection.
We strongly believe that the ruling is based on an erroneous interpretation of the functionality concept under EC trademark law. We have therefore decided to appeal the decision to the European Court of Justice.
What is this ruling about: First of all, it is important to state that this ruling is about trademark protection and not about unfair competition, patent or other legal provisions. The ruling will not mean any changes in the usual business of the LEGO Group. Furthermore, there is nothing in this ruling which implies that the LEGO brick is not unique or distinctive in its design. This ruling does only address the very technical issue of whether or not the brick is functional in relation to construction toys. It is important to note that this ruling does not affect existing EU trademark registrations for the three-dimensional shape of the LEGO brick for a long list of other goods than construction toys.