The LEGO Group filed an application for registering No. 34022807 three-dimensional trademark (referred to as the disputed trademark) to the CNIPA, designating it for use in the 28th category of commodities like "toys, toy tricks". The CNIPA rejected its application for registration due to the disputed trademark’s lacking distinctive features used on the designated goods.

The LEGO Group then filed an administrative lawsuit for trademark refusal reexamination to the Beijing Intellectual Property Court, and stated that the disputed trademark itself involves distinctiveness. Even though the trademark is not distinctive, it has already had distinctiveness through extensive use of the claimant, it should be approved for registration. The Beijing Intellectual Property Court made a judgment dismissing the plaintiff's claim.

The Intellectual Property Court held that, firstly, as a three-dimensional trademark, the disputed trademark is a puppet image as a whole, which shows the characteristics of a cylindrical head, half-circle hands, a three-dimensional trapezoid body, and a curved cuboid leg on one side. The trademark does not specify a color.

On account of the disputed trademark as a toy doll overall, it is designated to be used on toys and other commodities. In combination with the characteristics of the goods, it is not only easy for the relevant public to regard it as a component or other accessory accessories of toy commodities, instead of discerning it as a trademark as a whole, but also unable to function as identifying the source of goods.

Secondly, the disputed trademark itself is not a graphic trademark, but a three-dimensional trademark being the basic shape of the minifigures. The evidence in the case indicates that, during the use of the LEGO products, the image of the minifigure shows as different forms in various scenes, different colors and accessories will also cause significant changes of the minifigures’ appearance. Therefore, the image of the puppet in different periods and different scenes has no consistency and relevance with the image presented by the disputed trademark.

Considering that in actual use, the basic structure of dolls includes simplified structures of the head, body, and limbs, which is similar to those dolls in different kinds of commodities. The multi-category dolls manifested in the evidence of the case have long been appeared as partial accessories of toys. As a result, the relevant public cannot summarize the basic structural characteristics of the doll from the long-term and multi-variable image classification, nor can they directly and uniquely connect with the product provider. In addition, the use of evidence reflected in the case is not enough to prove that the disputed trademark involves distinctiveness of trademark registration and has been recognized by the relevant public through propaganda and use.

Therefore, the judge reminded companies or individuals of taking the relevant public as the main body, and making judgments from the aspects of relationship between the logo and its designated goods or services for use, as well as the service condition of the logo when registering trademarks. If it is difficult for the relevant public to recognize a certain mark as a trademark, the mark cannot play a role in identifying the source of goods, which indicates that the mark lacks distinctiveness and cannot be registered as a trademark.

From Beijing Intellectual Property Court

June 4th, 2021