Registering a trademark

JO McKENZIE, a solicitor with Barker Gotelee, provides an insight into what can, and what cannot, be registered as a trademark

EVERYBODY is aware of the famous shape of Lego.

Most of us have grown up playing with it and the Danish toymaker has sold millions of bricks since they were launched in 1958,

Recently, however, it has recently faced a challenge in the market from Mega Bloks, made by Mega Brands.

For many years, Lego has had a trademark for the two rows of studs on top of its bricks, which they claimed identified the origin of the brick.

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However, Mega Brands decided to challenge the award of the trademark, which had been registered as an EU Trademark since 1999.

Lego claimed that its brick contained characteristics that set it apart from the regular shape used in the industry.

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However, the Office of Harmonisation for the Internal Market (OHIM) disagreed, and as a result stripped Lego of its trademark stating that the two rows of studs on top of its bricks performed a “utilitarian function” and were not defining of the origin of the product.

This is obviously a blow to the company whose Lego bricks have been a hallmark in most children’s childhood since they were produced. However, the fact that they are so well known, will still stand them in good stead as they would be able to challenge any copying of their blocks through an action in passing off.

This allows a company to issue proceedings against anybody who copies its product so long as it has goodwill in the product, which Lego certainly does, and as long as it has suffered damage as the result of the infringer’s actions.

Furthermore, the company would need to prove that the consumers were confused as to the product and that custom was being diverted away from Lego.

It goes to show that, even when a trademark is obtained, if it is obtained on a tenuous basis there is always the risk that it could be withdrawn.

However, Lego did enjoy its protection for nearly a decade, and this would have been of great value to them.

Anybody thinking of copying Lego will still think twice.

Businesses should always consider what Intellectual Property protection their trading name will require.

By trade-marking their name, they are creating a clear indication of where the product has come from and, hopefully, the trademark will then become synonymous with the quality and reputation of the company itself.

This can be worth much to a company who intelligently exploits it.

Should you require any advice with regard to your intellectual property rights, please contact Joanna McKenzie on 01473 611211.

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