Lego trademark invalid: essential characteristics of shape consisting exclusively of intended technical result even if that result can be achieved by other shapes using the same or another technical solution
"43. It follows from all the foregoing that Article 7(1)(e)(ii) of Regulation No 40/04 precludes registration of any shape consisting exclusively, in its essential characteristics, of the shape of the goods which is technically causal of, and sufficient to obtain, the intended technical result, even if that result can be achieved by other shapes using the same or another technical solution."
Determining essential characteristics of shape: the essential characteristics of a shape must be determined objectively, on the basis of its graphic representation and any descriptions filed at the time of the application for the trade mark – perception consumer is not relevant
"70. In the first place, in so far as the applicant claims that the essential characteristics of the shape at issue must be determined from the point of view of the con-sumer and that the analysis must take account of consumer surveys, it must be pointed out that the determination of those characteristics takes place, in the framework of Article 7(1)(e)(ii) of Regulation No 40/94, with the specific aim of examining the function-ality of the shape at issue. The perception of the target consumer is not relevant to the analysis of the functionality of the essential characteristics of a shape. The target con-sumer may not have the technical knowledge necessary to assess the essential characteristics of a shape and therefore certain characteristics may be essential from his point of view even though they are not essential in the context of an analysis of functionality and vice versa. Accordingly, it must be held that the essential characteristics of a shape must be determined objec-tively for the purposes of applying Article 7(1)(e)(ii) of Regulation No 40/94, on the basis of its graphic repre-sentation and any descriptions filed at the time of the application for the trade mark."
Identification of essential characteristics that are not visible in graphic representation of the mark do not have an effect because the analysis sees to all elements that are visible in the graphic representation
"74. It is apparent from paragraphs 38, 39, 42, 54, 55 and 61 to 63 of the contested decision that the Grand Board of Appeal did indeed examine the Lego brick as a whole and in particular identified, at paragraphs 54 and 55 of the contested decision, the invisible hollow un-derside and secondary projections on the representa-tion of the mark at issue as essential characteristics forming the subject-matter of the examination.
75. None the less, it must be stated that that analysis also includes all the visible elements on the graphic repre-sentation reproduced in paragraph 2 above each of which, according to the Grand Board of Appeal, fulfils specific technical functions, namely, as set out in para-graph 54 of the contested decision, the height and di-ameter of the primary studs for clutch power between the toy bricks, their number for fixing versatility and their layout for fixing arrangement; the sides to produce a wall with other bricks; the overall shape of a con-struction brick and, finally, its size, enabling a child to hold it. It must also be noted that there is nothing in the file that calls into question the accuracy of the identifi-cation of those characteristics as essential characteris-tics of the shape at issue.
76.Since the Grand Board of Appeal correctly identified all the essential characteristics of the shape at issue, the fact that it also took into account other characteristics has no bearing on the lawfulness of the contested decision."
IPPT20081112, CFI, Lego v OHIM
