Lego, one of the biggest toy manufacturers in the world, is well-known for its serious and consistent approach to intellectual property protection.
Thanks to our colleague Masaki Mikami we can acquaint ourselves with Lego’s struggles to receive protection for the following 3D mark in Japan, representing a figure from their famous toy constructors:
The Japan Patent Office refused to register this sign based on absolute grounds – descriptiveness, lack of distinctiveness, technical function, and aesthetic value.
The Office argued that other companies use similar human shape figures as toys. Apart from this, the sign, thanks to its specific arms and legs, allows configuration with other parts of the constructor including caps, hair wigs, clothes, etc. From that perspective, the Office considered that the shape provides technical results and has aesthetic value for consumers.
The court upheld this decision. Lego submitted a study that aimed to prove an acquired distinctiveness of the sign. According to the study, 37,32% of the respondents connect the figure with Lego as a brand. However, the court noted that 37,45% of respondents related the sign with other companies which were enough for the court to consider this evidence as not sufficient in the case at hand.
As it is well-known copyright is one of the main intellectual property rights that every creator can rely on in order to benefit from his or her created works. The problem with copyright is that it can invoke really complex disputes out of nowhere.
One example of this possibility is a recent lawsuit against LEGO, a toymaker company whose practice is to use characters and stories from famous movies or series for kids constructors.
In the case at hand, the company uses a design of a jacket, known as the “Concannon Jacket”, worn by Antoni Porowski part of Netflix’s Queer Eye reality show.
James Concannon is the artist who created this design, giving Netflix permission to use it for the show.
According to him, however, LEGO has no authorization to use the jacket design for their toys “Queer Eye – The Fab 5 Loft”, which are based on the reality show’s characters.
LEGO dismissed this accusation claiming that they use legally the jacket at least because they had a license from Netflix which in turn had permission from the artist for the same jacket.
Obviously one of the center moments here is what was the scope of the initial license and whether it includes such merchandising use.
According to the US Copyright law, apparel is not copyrightable as a whole. Only separable creative elements of it can be protected.
So the issue here is to what extent the original jacket’s elements are subject to copyright protection alone and to what extent those used by LEGO are similar enough in order for infringement to be found.
Source: SS Rana & Co – Ananyaa Banerjee and Nitika Sinha for Lexology.
We are all aware about toys in the form of guns used by kids for playing. However, it is rare a real gun in the form of toy to be found, a dangerous product which can cause a harm if used by children.
This is the case with the gun cover produced by the US company Culper Precision. They offer a gun cover (Block 19) in the form of a Lego toy, using the well-know design pattern typical for this type of toys. The gun under the cover is real.
Of course the Danish company sent a cease and desist letter insisting sales of such covers to be stopped immediately due to the potential misleading effect on children and possible dangerous incidents that can happen as a result.
Although Culper Precision didn’t infringe a registered trademark belonging to Lego, they used a style typical for Legos’ toys, which could mislead consumers about the product characteristics.
The US company agreed to stop producing this cover after selling 20 items of it. It will be interesting whether Lego will initiate a lawsuit for passing off for example.
Source: EAGLEGATE – Nicole Murdoch
The EUIPO Board of Appeal has ruled in a case where the following EU trademark application was filed in class 28 – games, playthings, and decorations for Christmas trees:
Against this mark an opposition was filed by Lego based on earlier trademarks LEGO and LEGOLAND in class 28.
The EUIPO refused the application. The Applicant appealed stating that there was no similarity because of the fact that the first part of their mark consists of the word LEGNO which means WOOD in Italian. This in turn creates meaning of toys made out of wood. Due to this conceptual difference with the earlier signs there was no possibility for consumer confusion.
The Board of Appeal disagreed. The fact that the word Legno has a meaning in Italian was not enough to overcome the similarity. The reason is that most of the consumers in the EU would not understand that word at all.
From visual and phonetic point of view the signs are similar for identical and similar goods. What’s more, both earlier marks have proved reputation in the EU market for many years.
From that perspective LEGNOLAND can be confusingly similar to LEGO and mostly to LEGOLAND.
This case is very indicative that you cannot rely always on the fact that your brand name has a meaning in one language for the purpose of differentiation with other marks, especially in the case of EU trademarks. Sometimes this is not enough particularly in the case of well-known and famous trademarks.
Rosie Burbidge published an interesting article about the Lego’s IP strategy, discussed through the Second Brand Protection Conference in Frankfurt.
The article goes through the different stages of intellectual property protection adopted by Lego and the different approaches used by the company in order to prolong this protection and to strengthened it. For example, the company has not only a trademark portfolio but domain names one too, which serves to enhances the brand protection on the internet.
It is quite fascinating how the Duch company uses social media to interact with its consumers and to explain gently the need for its IP protection or the fact that a special video was created which was given to customs authorities around the world to help them to distinguish original Lego product from fake ones
The full article can be found here.
TBO reports about a case before the World Intellectual Property Organization’s (WIPO) Arbitration and Mediation Center initiated by LEGO regarding the use of the following domain www.operationslego.com by a third party.
This website includes, without permission, trademarks belonging to the company as well as it gives a link for purchasing Lego products again without any authorisation.
According to the Arbitration and Mediation Center, this domain name is confusingly similar to the LEGO’s well-known trademarks and it was been registered and was being used in bad faith.
More information here.