The battle for the LEGO minifigure

Colorful bricks that fit perfectly together, allowing for endless construction possibilities – LEGO is undoubtedly an iconic brand for both young and old.

The revolutionary toys changed the industry forever and the company rightfully secured numerous intellectual property rights.

In addition to design rights on the LEGO brick itself, LEGO also holds design rights on the LEGO minifigure as well as trademark rights on its classic shape. The LEGO minifigure fits perfectly onto the bricks, becoming an integral part of the custom-built creations. With such iconic designs, competition is always lurking.

Not surprisingly, the toy manufacturer filed several applications for the cancellation of toy figure design registrations of third parties over the past years. Among which are two recent actions against a Chinese company and one against a Polish woman, LEGO argues that the figures from both the Chinese company and Polish person do not show a different overall impression in relation to the designs and trademark of LEGO.

To qualify for registration, a design must be novel and possess an individual character. The concept of "individual character" means that the design must differ from what already exists. The European Union Intellectual Property Office (EUIPO) assesses, among other factors, the degree of freedom the designer has regarding the design: while a toy figure generally has a body with arms, legs, and a head, there are no strict limitations on how these features can be shaped or proportioned.

Nonetheless, both the Chinese and Polish holder opted for a cylindrical head with rounded edges, an hourglass-shaped torso, and U-shaped hands with similar proportions. Additionally, the EUIPO highlighted the similar method by which the torso and legs of the Polish company’s figure and LEGO’s minifigure are connected.

While the Chinese party did not contest LEGO’s arguments, the Polish one did. The person argued that the pin connection system for the various parts limits the designer’s creative freedom. Furthermore, she contended that the market is saturated with this type of toy figure, and informed consumers pay close attention to the small details that distinguish these figures. To support this claim, the Polish party presented evidence of a wide range of toy figures available on the market.

However, the EUIPO’s Invalidity Division found that the evidence presented only demonstrated the diversity of toy figures available in the market, but not how consumers perceive these figures. Instead, it highlighted the numerous possible combinations of these types of figures. This contradicted the Polish party’s argument that design freedom was constrained due to the need for parts to be compatible, such as how parts click together or the proportions of the figure. The EUIPO concluded that alternative configurations still allow for effective functionality and mechanical connection in a similar manner.

In the end, the EUIPO ruled that the overall impression of the Chinese and Polish parties’ minifigures was strikingly similar to LEGO’s. The small differences in arm position and the clothing (skirt or pants) did not suffice to differentiate the figures. Therefore, the registrations for all three toy figures lacked a individual character and were declared invalid.

Author: Erwin Haüer

Bio: Erwin is a trademark attorney and, as the managing partner, in charge of IT and Information Management. He works extensively with startups and scale-ups, while his clientele also includes numerous multinational corporations. Erwin possesses a sharp wit and a keen eye for remarkable trademark news and curious brand infringements.