Switzerland: Swiss Supreme Court Remands Decision of First Instance Declaring LEGO Shape Marks Void
Case No. 4C.46/2003

Dr. Markus R. Frick, LL.M., Esq.

Originally published in the Swiss Federal Reporter as BGE 129 III 514.

As reported earlier, the Commercial Court of Zurich had admitted the claim against the Danish toy manufacturer Lego lodged by its main competitor, Mega Bloks, Inc., declaring five registered shape marks of their toy bricks in different sizes void. The Zurich court found that the attacked trademarks were functional and thus lacked distinctiveness.

On Lego’s appeal, the Supreme Court agreed in its recently published decision (BGE 129 III 514 = Swiss Federal Reporter) with the lower court that the rectangular form of the bricks was obvious and did not deviate from the expected and the common. However, the Supreme Court found in contradiction to the prior instance that the interlocking function of the bricks achieved by cylindrical studs did not characterize the nature of toy blocks.

The court identified four different categories of three-dimensional trademarks:

• First, there are shapes that result from the nature of the goods themselves. Such shapes cannot be protected, since they are functional, like e.g. a simple chair or a tennis racket.

• Second, there are technically essential shapes. A shape is considered technically essential if there is no alternative shape available for competitors or the use of an alternative shape cannot reasonably be expected. An example for a technically essential design is the form of a screwdriver in cross-form.

• The third category refers to shapes providing a technical advantage but that are not essential in the sense of the second category. Such shapes generally belong to the public domain because they are not inherently distinctive, but they can acquire distinctiveness through use (secondary meaning).

• The forth category consists of shapes that are technically useful but are not primarily determined by their technical use, such as the triangular form of the Toblerone chocolate that makes it easier to break. Such shapes can be inherently distinctive; however, if they are not, they also have to acquire secondary meaning.

Since the lower court concluded that the Lego shape marks were functional, it did not examine whether the cylindrical studs used to achieve the interlocking function were technically essential shapes in the sense of the second category. Hence, the Commercial Court of Zurich has to undertake this test on remand and examine if other shapes were less practical, less solid or more expensive to achieve the interlocking function. Furthermore, the Supreme Court held that if the cylindrical studs were not technically essential but rather provided a technical advantage in the sense of the third category, they were not original and distinctive. Hence, they had to acquire secondary meaning, if they were to be protected at all under trademark law.

As a result of the above findings, the Lego shape marks case will not come to an end just yet. It is now up to the Commercial Court of Zurich to determine whether the Lego shape marks are indeed void because they fall under the second category of technically essential shapes not subject to trademark protection (confer the European Court of Justice’s Philips / Remington decision of June 18, 2002, no. C-299/99; comparative law remark by author, not included in court decision), or if they only provide a technical advantage in the sense of the third category. In the latter case, Lego would have to show secondary meaning to uphold its trademark registrations.

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