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LEGO brick at issue in the EU action regarding registrability of shape marks

Should brand owners and manufacturers be able to register shapes like this as trademarks?

The Court of Justice of the European Union is expected to release its ruling tomorrow on whether a Lego brick can be registered as a trademark in Europe.  The ruling will come nearly eight months after Advocate General Mengozzi opined that registration of the brick was not permissible (and tried to use one of Sony’s trademarks descriptively).

The key legislative text which formed the basis of this action (for cancellation of a mark which Lego had successfully registered back in 1999) is found in Article 7(1)(e)(ii) of the Community Trade Mark Regulation (40/94), which reads:

Article 7: Absolute grounds for refusal

1. The following shall not be registered:

(e) signs which consist exclusively of:

(ii) the shape of goods which is necessary to obtain a technical result; or

I reviewed the AG’s opinion for World Trademark Review.  A copy of the article can be found in .pdf format here.  Another version of the article, published on the Ashurst website, can be found here.

It will be interested to see the extent to which the Court adopts AG Mengozzi’s reasoning, and what they have to say about the (admittedly unclear) three step test that he put forward.

It will also be interesting to see what comments (if any) the Court make over AG Mengozzi’s generic use of one of Sony’s trademarks.  At para 73, he refers to “memory sticks”, and later in the same paragraph refers back to “those USB keys”.  He even inserts a footnote (number 49) to say that “memory sticks” are also known as “USB keys” or “pen drives”.  This is a particularly interesting set of statements for an AG delivering a trademark opinion to make, since “MEMORY STICK” is actually a trademark of Sony Corporation (and it’s a European registration, no less, with number 004021598), and because Sony’s memory sticks don’t use USB technology either. In fact, USB keys and MEMORY STICKS don’t even look the same.  I wonder what Sony made of that comment.

A Sony MEMORY STICK

A Sony MEMORY STICK

USB drive
A USB key / pen drive / flash drive

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