Modernisation of trade mark law in the USA
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The LEGO Group, the toy brick building company, has successfully opposed a UK trade mark registration filed by copycat Chinese manufacturer, Lepin.
The LEGO Group has a long history of battling with the manufacturers of ‘copycat’ or imitation products. The LEGO Group rose to occupy a dominant position in the ‘toy building blocks’ market during the 1960s on the back of a series of patent applications which covered the iconic plastic building block.
The last of LEGO’s major patents covering the LEGO building block expired in 1989, and since then a number of companies have produced interlocking bricks which are similar to LEGO’s building blocks. These competitor products are normally compatible with LEGO bricks, and are often sold at a much lower cost.
In order to defend their market position the LEGO Group has sought to rely on other forms of intellectual property rights, in particular trade marks, with varying levels of success.
In the recent case between LEGO and Lepin, LEGO successfully invalidated a UK trade mark registration containing the word ‘LEPIN’.
The mark in issue covered a range of goods including: “toys” and “building blocks [toys]”, registered in the name of Shantou Chenghai District Longjun Toys Factory Co., Ltd.
LEGO argued that Lepin’s mark should be declared invalid on the basis on its earlier well-known EU trade mark registration in respect of “games and playthings” and LEGO’s use of this sign in commerce.
In support of the application to invalidate Lepin’s mark, LEGO produced evidence demonstrating advertising expenditure; royalty revenue through the sale of LEGO branded products; the existence of fourteen specialist LEGO stores across the UK; the existence of the theme park, LEGOLAND Windsor; and the fact that 78% of all children in the UK own LEGO products.
This evidence was deemed to be sufficient to demonstrate that the LEGO mark was “about as distinctive as it is possible to be by virtue of its use”.
In addition, LEGO also produced evidence relating to Lepin’s use of the ‘LEPIN’ mark, these exhibits show comparisons of LEGO and Lepin products side by side.
Lepin attempted to defend its mark by arguing that:
The UKIPO was not persuaded by Lepin’s arguments. In particular, upon considering the evidence submitted by LEGO, it was clear that the reality was that the Lepin mark was almost always used in the same red and white colourways that LEGO has been using in the marketplace since the early 1970s. In addition, it was also noted that while LEGO is indeed a word contained within the Oxford English dictionary it is clearly stated this is a trade mark.
On this basis, the UKIPO, having considered LEGO’s enormous reputation in the United Kingdom and evidence of Lepin’s actual use of their trademark, which was almost always applied to products which were often directly copied from the packaging of LEGO products, decided that this was a clear case of free riding on the reputation of established brand. Therefore the request to invalidate Lepin’s mark was upheld all grounds.
This case is another victory for LEGO against unscrupulous copycat brands. However, it is worth noting that if the trade marks themselves were considered in isolation, without the evidence provided by LEGO, the outcome of this case may have been very different. Undoubtedly, if Lepin’s monochrome mark had been compared with LEGO’s red-and-white figurative mark without reference to the additional evidence provided, the invalidation action would have likely been unsuccessful. Therefore, when contemplating proceedings before the UK trade mark registry, it is of paramount importance that trade mark owners consider the impact of filing additional evidence, and not to merely focus on a direct comparison of the marks themselves.
If you would like any advice on trade mark protection, please get in touch to speak to one of our attorneys.