Posted by Stephen Welfare, Partner
LEGO – the building bricks for successful brand protection
Earlier this year the children’s building toy company successfully applied for the registration of the mark LEPIN by a Chinese toy manufacturer to be invalidated (UKIPO decision 0/142/19). LEGO proved to the satisfaction of the UKIPO that there existed a likelihood of confusion with the LEGO mark (section 5 (2)(b) Trade Marks Act 1994).
LEGO demonstrated that it’s logo was highly distinctive. The colours used by LEGO were important in establishing the distinctive character of the brand. LEPIN’s choice of very similar colours and presentation satisfied the UKIPO that there is a likelihood of confusion. The use of Chinese characters did not sufficiently distinguish the Chinese products, which the UKIPO felt could be considered by consumers as a Chinese sub-brand of Lego.
It was also held that the LEPIN mark took unfair advantage of the LEGO trademark, contrary to section 5(3) of the Act.
The use of the LEGO mark dated back to 1973 and it was accepted that substantial goodwill exists in the brand in relation to toys (in particular construction toys). The structurally similar LEPIN mark with similar colour scheme displayed a strong intention to benefit from the level of goodwill enjoyed by LEGO. It was held that LEGO had a strong case against LEPIN for passing off. LEGO succeeded in having the LEPIN mark invalidated under section 5(4)(a) of the Act.
What brand owners can learn from LEGO is how to build up a body of evidence for use in proceedings (if necessary) to protect the brand.
- Establish a thorough record keeping protocol for data such as:
- Financial information (expenditure on marketing, advertising, royalty receipts from licencing, branded product turnover)
- Customer service records (what customers say about the brand, loyalty, examples of confusion)
- Imaging evidence (photographs and videos to give visual impact in support of goodwill)
For the full decision of the UK Intellectual Property Office click here:
If you have any enquiries, please contact Stephen Welfare on:
020 7842 1426 Email us
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