can you build a trade mark out of Lego?

The European Court of Justice has ruled that the Lego brick cannot be registered as a trade mark because its shape is necessary to obtain a technical function, ie to enable another Lego brick to be attached to it. The court found that the exclusion applies even where, within the shape, there are other non-essential characteristics with no technical function.

So where does that leave products whose shapes are dictated by technical functions? Design protection may be available for some features of shapes, but again there is an exclusion applying to features of a design which are solely dictated by technical function, so community registered and unregistered design rights may be of little assistance. If the product is novel and inventive, it may qualify for patent protection.

The ECJ gives little guidance as to when any non-technical features are sufficiently relevant so as to bring the shape within trade mark protection. Those seeking such protection will have to place a great emphasis on any non-technical features, to get over the hurdle of registrability – something which the Lego brick failed to do.