The answer is that they were both the subject of two recent decisions which shed further light on the ability to register three-dimensional shapes as trade marks.

On the face of it, a three dimensional shape may be registered as a trade mark provided it meets the usual criteria (distinctive, non-descriptive, capable of distinguishing goods of one business from another etc).

However, there is one important additional stipulation that must be satisfied to obtain trade mark protection over a three dimensional; namely, it must not consist exclusively of a shape which is necessary to obtain a technical function.

Recently, Lego put this requirement to the test when it attempted to register its iconic Lego brick as a Community Trade Mark. This prompted an opposition from MEGA Brands Inc (a toy manufacturer producing similar toy building blocks to Lego) and sparked a series of hearings and appeals.

Although we await the final decision of the European Court of Justice, on 26 January 2010 the Advocate General issued its opinion on the matter, which the ECJ may well adopt. Lego Juris A/S v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [2009] E.T.M.R. 15.

The Advocate General went into some depth to explain the steps for establishing when a shape would be able to be registered as a trade mark. Firstly, one must identify the most important elements of the shape and then the functionality of each of these elements has to be identified. Provided not all of the elements are functional in nature, it would then be necessary to consider whether the functional elements of the mark (if any) could be excluded from trade mark protection by appropriate use of disclaimers and assess whether registration of the shape would harm competition.

Finally, it must be established whether the shape has distinctive character looking at, amongst other things, the overall impression conveyed by the shape from the viewpoint of a consumer.

In the Advocate General’s opinion, the Lego brick failed the first stage of this test as the very nature of the shape of the Lego brick was dictated by its technical function as a building brick.

Trade mark cases concerning shapes dictated by their technical function are few and far between, so it is unsurprising that the Advocate General took this opportunity to issue further guidance. However, it is arguable that the proposed test is complex and creates a heavy evidential burden on a trade mark applicant which may deter people from making future applications. We wait to see whether the ECJ will adopt the same approach in its decision.

In another matter relating to the registration of three-dimensional shapes as trade marks, a hearing officers’ finding that the shape of a Scottish terrier mark was invalid as a trade mark was partially overturned on appeal. In the matters of registration nos. 2380724B and 2380724A in the name of Agatha Diffusion in classes 3, 14, 18 and 25, and applications for declarations of invalidity thereof by Monsoon Accessorize Limited, 18 January 2010.

Originally the entire trade mark application was found to be unregistrable because a Scottish terrier was descriptive since certain of the goods specified in the application could be produced in the shape of a Scottish terrier (such as backpacks and jewellery) and in relation to the remaining goods it lacked distinctiveness since the public were not used to seeing a three-dimensional shape attached to a product as indicating its origin, but rather saw it as decoration.

On appeal the hearing officer’s decision was only upheld in respect goods which could be in the shape of a Scottish terrier. The Appointed Person did not accept that a Scottish terrier generally lacked distinctiveness and duly allowed the application to proceed in respect of those goods.