Application for Nullity of a 3D Trademark Rejected – Case No. T-298/22
The shape of the figures of a well-known toy manufacturer remains protected under trademark law following a decision by the General Court of the European Union (GC) on December 6, 2023 (Case No.: T-298/22). In its judgment, the GC dismissed a competitor’s application for nullity of the trademark.
The design and shape of a product can hold significant recognition value for consumers. For this reason, it is important for manufacturers to protect the shape of a product by registering it as a trademark. In principle, the appearance of a product or its parts can be protected under trademark law. However, a prerequisite for registration is that the shape is not necessary for achieving a technical function, as noted by MTR Legal Rechtsanwälte, a law firm advising on IP and trademark law.
Technical Necessity of the Shape
The legal dispute that reached the General Court of the European Union also centered on whether the shape of the toy figures was technically necessary. The manufacturer had registered the figures’ shape as a three-dimensional EU trademark. A competitor contested the validity of this trademark and filed a request for its cancellation with the European Union Intellectual Property Office (EUIPO), which was unsuccessful.
The competitor subsequently took the matter to the General Court, seeking nullity of the registered trademark. They argued that the figures’ shape, with its connection system, merely served a technical function of interlocking with other toy bricks. Consequently, the trademark was deemed non-registrable.
General Court Confirms Additional Essential Features
The key question for the General Court was whether the shape solely served a technical function, making it ineligible for trademark protection, or whether it also possessed other essential features that were not necessary to achieve a technical function. The court affirmed the latter.
While the General Court acknowledged that the figures feature a specific interlocking system for compatibility with other bricks from the manufacturer, it held that this technical function was not the shape’s sole purpose. According to the court, the figures also included creative and decorative elements beyond mere functionality. The figures could take on forms different from their typical shape while maintaining the same functionality. This shape, therefore, reflected the manufacturer’s design freedom, the court added.
Since the figures thus exhibit at least one essential feature that goes beyond purely technical functionality, they qualify for registration as a 3D trademark. Accordingly, the General Court upheld the EUIPO’s assessment and dismissed the application for nullity.
Pure Technical Function Is Not Protected
The General Court further clarified that registering the figures as an EU trademark does not grant the defendant manufacturer a monopoly. Other companies are free to design figures compatible with the interlocking system. However, the pure technical function—i.e., the interlocking system—cannot be protected under trademark law. Competing toy figures must be visually distinct enough to avoid infringing the existing trademark rights. This is because the characteristic shape of the toy figures is protected under trademark law, the General Court emphasized.
In addition to 3D trademarks, word marks, figurative marks, word/figurative marks, color marks, or sound marks, among others, can also be protected by registration. Registration grants the owner exclusive rights to use the trademark. The prerequisite for registration is that there are no barriers to protection and that the mark has sufficient distinctiveness. The risk of confusion with existing trademarks is a frequent point of contention in trademark law.
MTR Legal Rechtsanwälte has extensive experience in IP and trademark law and supports you in trademark registration, protecting your trademark rights, or defending against unwarranted claims.
Feel free to contact us!
