Archive | 2015, June | (3) posts

The “LEGO-MAN” is still protected as a trademark

Just last week the General Court of the European Union decided in a very interesting case that has been going on for years between LEGO and Best-Lock Construction.

In 2000 Lego registered the below three-dimensional community trademarks for “games and playthings”. The Danish toy giant has now won a 4 year long legal battle against their competitor Best-Lock Construction. Best-Lock was of the opinion that LEGO did not have exclusive rights to the classic LEGO figure, however the European Court of Justice did not agree, and on 16 June 2015 they rejected the lawsuit.

legoman

For several years Best-Lock has produced small figures very similar to the classic Lego figure just selling them at a significant lower price. Lego’s trademark rights have excluded Best-Lock from the European market, and the recent decision from the General Court has firmly established that Best-Lock will not be entering the European market in the future.

Best-Lock had applied for a declaration of invalidity of the above trademarks arguing that the shape of the goods in question is determined by the nature of the goods themselves and that the toy figures as a whole (namely the possibility of joining them to other interlocking building blocks for play purpose) and in their particulars, provided technical solutions (namely being combined with other building blocks)[1].

However the General Court has concluded that the characteristics of the shape of the figures in question are not necessary to obtain a technical result.

As a result the world renowned Lego figure is still protected as a trademark. This decision does however only have effect in Europe and Lego is still facing their products being copied in other parts of the world. Lego has ongoing cases like this against both Best-Lock and also other companies where the Lego figure and the basic shape of the classic Lego brick are being copied.

It will be interesting to follow these decisions, and see how the different courts will evaluate the cases.

Maria Dam Jensen, Legal Counsel

[1] Curia Press Release No 71/15

Time for abolishment of basic registrations for international registrations of trademarks?

By an application of international registration according to the Madrid system a trademark can be registered in a number of countries and regions in a more time and cost efficient way compared to filing of national applications only.

In contrast to international registrations for designs or patents, the Madrid System requires a domestic application or registration as basis for the international registration. The basic right requirement originates from a time when numerous countries required that foreigners had a domestic registration.

International registrations are dependent on its basic right for a period of five years. This means the international registration ceases to have effect to the same extent as the cancelled basic right during that period (so-called central attack). This happens regardless of if the ground for cancellation is limited to the territory of the basic right or not. Consequently, the dependency on the basic right may be very painful or at least incur unwanted sunk costs.

However, it seems the dependence principle may come to an end. WIPO’s Working Group on the Legal Development of the Madrid System has discussed the dependency principle in several meetings and WIPO has just conducted a Madrid-user survey on dependency principle issues.

Good trademark portfolio management usually means cost chasing efficient filing strategy. However, the current dependency requirement and the wish to minimize the risk of central attack affect the filing strategy. One example is that Swedish companies often chose to apply for Swedish basic rights despite plans to designate EU. This, because Sweden is a small market where prior rights are automatically examined as ground for refusal and thus seen as a territory where more reliable basic rights can be established compared to unexamined CTMs and national registrations in member states that cover a larger market. This practice also often leads to that the holders chose to refrain from priority requests as the basic applications seldom are granted before the time period for priority requests have expired.

As I see it, the greatest advantages with an abolishment of the dependency principle are quicker cost-efficient filing strategies and better long-term predictability as the risk for central attack would disappear. There would be no reason to await the registration of a basic right before the filing of an international registration nor a five year long uncertainty as to the international protection since the international registration will be upheld on the merits of each territory regardless of if there may be grounds for refusal or cancellation in another (domestic) territory. For keeping the dependency principle some argue that that patent owners have expressed a need for the possibility of a central attack in the European patent system. However, the situation is different for trademarks which lack the novelty requirement.

Angela Boman, Attorney at Law, Partner

Paving the IP way for SMEs

Small and medium-sized enterprises (SMEs) often face difficult decisions about how to prioritize between various efforts, such as marketing, product development and intellectual property (IP). To facilitate the introduction of IP into these companies, Awapatent has recently launched a new service called “Startup Services – IP for the newborn company”. This initiative strives to inaugurate a possibility to create an asset for these companies which could well become their most valuable one, namely an IP portfolio comprising one or more patents, trademark or design protections.

The Startup Services are aimed at companies fulfilling three requirements:

  • The company should not be older than two years
  • The turnover of the company should be less than 500 000 SEK
  • A brief application should be sent, containing company name, address and IP right sought

Within this service, Awapatent guarantees a safe, streamlined and cost-effective process from the first contact with one of its attorneys to the filing of an IP right. The first meeting is free of charge. The service offer also includes agreements, for example a non-disclosure agreement to be used when meeting potential clients or collaborators.

To further illuminate the possibilities for SMEs in this field, the innovation agency of Sweden, VINNOVA, has recently started its distribution of innovation cheques. The goal of this project, which will last until 2017, is to stimulate the development of innovation in SMEs and help improving their innovation capacity. The project will provide the companies with a quick and efficient access to funds for consulting external IP expertise.

The most important requirements for companies wishing to apply for an innovation cheque are as follows:

  • The company should have 3 – 249 employees
  • The company should have conducted business at least 1 year and have a net turnover of at least 1.5 MSEK

The innovation cheque, which may amount to 100 000 SEK, can be used for the purchase of services from consultants having the expertise to provide strategic business advice on the management of IP assets.

In my opinion, Awapatent’s Startup Service and VINNOVA’s innovation cheques should be highly interesting for young aspiring companies. The Startup Service significantly lowers the threshold which many companies associate with IP in terms of complexity and cost. Furthermore, once companies take their first steps into the field of IP, they often gain a deeper insight in its importance, possibilities and reward. I also believe that the innovation cheques directed towards somewhat more mature SMEs are praiseworthy and serve a similar purpose, namely to boost the recognition of IP as an important business tool.

To conclude, I strongly advise SMEs to explore the possibilities of receiving advice and services by acknowledged IP consultants related to Awapatent’s Startup Service and/or VINNOVA’s innovation cheques, regardless of the size of the company’s current IP portfolio.

Love Koci, MSc, PhD, European Patent Attorney