On 16 July 2009, the First Civil Senate of the Federal Court of Justice (BGH), which is responsible inter alia for trade mark law, ruled on the legal validity of the registration of a Lego brick as a trade mark.
A Lego brick with the typical stud arrangement on the top had been registered by the German Patent and Trade Mark Office in 1996 as a three-dimensional trade mark for the product "play bricks". Several cancellation applications were filed against this because, according to the applicants, the three-dimensional trade mark should not have been registered.
The Federal Court of Justice confirmed the cancellation of the trade mark pronounced by the Federal Patent Court. It held that the Lego brick was excluded from registration as a three-dimensional trade mark under Section 3(2)(2) MarkenG. According to this provision, signs are not eligible for trade mark protection if they consist exclusively of a shape which is necessary to achieve a technical result. The provision of Section 3 (2) no. 2 MarkenG is based on the legal idea that, in the public interest, shapes whose essential features fulfil a technical function must be kept free from trade mark protection.
The Federal Court of Justice assumed that for the question of the registration of the toy brick as a trade mark, exclusively the clamping knobs on the top of the toy brick are to be taken into account. The cuboid shape of the brick cannot be taken into account for trade mark protection because it is the basic shape of the type of goods which cannot be protected under Section 3 (2) No. 1 MarkenG. The studs on the upper side of the gaming piece have exclusively a technical function. Together with the design of the inside of the toy brick, they are part of the typical Lego clamping system. The Lego brick does not have any further non-technical design features. However, the technical components of the toy brick must be kept free of trade mark protection in the interest of competitors.
Decisions of the Federal Court of Justice of 16 July 2009 - I ZB 53/07 and 55/07 - Lego brick ; Federal Patent Court, Decisions of 2 May 2007 - 26 W (pat) 80/05 and 26 W (pat) 82/05
Source: Press release of the BGH
Goldberg Attorneys at Law
Lawyer Michael Ullrich, LL. M. (Information Law)
Specialist lawyer for information technology law (IT law)
e-mail: Info@goldberg en
