Facts
LEGO System A/S (defendant) is a Danish company that has been manufacturing the well-known LEGO construction bricks for decades. It deposited several Swiss shape marks for construction toys with the Swiss Federal Institute of Intellectual Property (IGE). Mega Bloks Inc. (plaintiff), a Canadian company that also produces construction bricks compatible with LEGO bricks, filed a request with the Commercial Court of the Canton of Zurich to declare these shape marks null and void.
The Commercial Court upheld the claim and declared the shape marks null and void. It found that all the features of the deposited shape marks were functional and that there was no difference between the form expected by the public and the actual form, and therefore it was not distinctive. Furthermore, the defendant's conduct constituted an abuse of trademark law, as it was attempting to exclude competing products from the market.
The defendant filed a federal appeal against this judgment.
Considerations
The Federal Supreme Court first examined whether the forms claimed by the defendant are excluded from trademark protection under Art. 2 lit. b TmPA because they constitute the essence of the goods. It concluded that the cuboid form and the cylindrical knobs attached to it correspond to the public's expectations of a construction toy, but the clamping effect that allows the bricks to be firmly assembled is not part of the essence of the construction toy.
As a possible absolute ground for exclusion from protection, the Federal Supreme Court then examined whether the claimed forms are technically necessary under Art. 2 lit. b TmPA. It found that there are a variety of possibilities for achieving the clamping effect and that the forms…