The General Court of the EU ruled last week that Lego's European Community Trade Mark (CTM) for the shape of its Lego man is valid.
This decision is interesting because in 2008 the General Court held that Lego's CTM registration for the shape of its Lego bricks was invalid. Also, the Advocate General of the Court of Justice of the EU recently agreed with the English High Court that Nestlé could not register the shape of its KitKat bar as a trade mark.
It is of course still possible to obtain trade mark registration for the shape of a product, so long as the shape does not consist exclusively of i) the shape which results from the nature of the goods themselves, ii) the shape of goods which is necessary to obtain a technical result, or iii) the shape which gives substantial value to goods.
In the case of the KitKat bar, the Court held that: its rectangular slab shape resulted from the nature of the goods; the presence, position and depth of the grooves (shape) was necessary to divide the bar into detachable 'fingers' (technical result); and it was necessary for there to be three grooves in order for there to be four fingers.
Those of you who have come across registered designs may well be thinking “So why doesn’t Nestlé just get a registered design for the shape of the KitKat bar? Surely that would protect the shape?” You are of course correct. But (and it is a big ‘but’) a registered design only lasts for 25 years at most, whereas a trade mark registration, and the protection it gives, can go on forever.