No trademark protection for LEGO blocks (BGH 16.7.2009, I ZR 53/0)
Under § 3 para. 1 MarkenG (Trademark Act), trademark protection is not limited to words but also extends to three-dimensional designs. In this context the German Patent and Trademark Office registered the LEGO block with its typical arrangement of knobs on the top as a three-dimensional trademark for the product “building blocks”. There are a number of applications for deletion, because the applicants believe that the three-dimensional trademark should never have been registered. The Federal Patents Court granted the applications and ordered the trademark’s deletion. The Federal Supreme Court confirmed the orders in a current ruling.
In the view of the Federal Supreme Court, the question of the registration of the LEGO block as a trademark hinged exclusively on the connecting knobs on the upper side of the block. The rectangular design, on the other hand, could not be taken into consideration for protection because this is the basic shape of the general category of toy building bricks, which cannot be protected under § 3 para. 2 no. 1 German Trademarks Act (MarkenG).
However, registration of the LEGO block as a three-dimensional trademark with regard to the connecting knobs is prohibited by the provision of § 3 para. 2 no. 2 MarkenG, under which features cannot be protected which consist exclusively of a shape required to achieve a technical result. The provisions of § 3 para. 2 no. 2 MarkenG are based on the legal theory that the public interest requires shapes to be unprotected if their material features perform a technical function.
The knobs on the upper side of the play building brick have an exclusively technical function. In combination with the design of the interior of the block, they are part of the connecting system typical of LEGO. The LEGO block has no other non-technical design characteristics. However, the technical elements of the play building brick must be ineligible for trademarking in the interests of the competitors, so that trademark protection must be denied.

DSDS logo vs. “S sucht Deutschlands hässlichstes Jugendzimmer” (“S is looking for Germany’s ugliest bedsit”) (OLG Cologne, ruling of 06.02.2009, Az. 6 U 147/08)
The applicant owns the word mark “Deutschland sucht den Superstar” (“Germany is looking for the superstar”) and two word/picture marks with this element which were registered by at the latest October 2003 for the category of furniture. The defendant, which operates furniture and furnishing stores throughout Germany, ran a competition in August 2007 using the logo shown in the specific form of the violation with the slogan “S sucht Deutschlands hässlichstes Jugendzimmer”, which was advertised on the Internet and in leaflets.
The lower court ordered the defendant to cease using or having use made of the logo “S sucht Deutschlands hässlichstes Jugendzimmer” in the specific form of the violation to advertise furniture and furnishings. The defendant appealed to the OLG Cologne.
The appeal was denied. The Regional Court was right in finding that the applicant had a right to an order to cease the use and provide information on the logo “S sucht Deutschlands hässlichstes Jugendzimmer” and “S sucht Deutschlands hässlichstes Wohnzimmer” (“S is looking for Germany’s ugliest living room”) and to a claim for damages against the defendant on the merits of the case. However, in the view of the OLG there was no violation of § 14 para. 2 no. 2 MarkenG, as in the absence of any risk of confusion there was no “use in the sense of a trademark” of the logo. In the instant case the defendant’s logo evokes the title of the applicant’s TV commercial and the text element of its trademarks, but this is done with ironic indirectness which the target groups must be aware of. While the target public establishes a mental link to the applicant’s trademarks, it is made clear at the same time that the logos complained of do not originate with the applicant.
However, the use of the logo “S sucht Deutschlands hässlichstes Jugendzimmer” for advertising purposes constitutes unjustified and impermissible exploitation of the status enjoyed by the familiar DSDS trademarks (§ 14 para. 2 no. 3 MarkenG). The requirements for use in the sense of a trademark are less stringent in no. 3 § 14 para. 2 MarkenG than in no. 2 (BGH loc cit. pa. 584 II 1 b aa, last paragraph). The text “S sucht Deutschlands hässlichstes Wohnzimmer” evokes association with the applicant’s trademarks, so that in this context the applicant’s trademark rights were violated.