Everything is awesome: Lego blocks “Lepin” trade mark registration
Posted by freemexy on August 30th, 2019
In February 2019, LEGO successfully invalidated an application for a UK trade mark featuring the word "LEPIN". The mark was filed by Shantou Chenghai District Longjun Toys Factory Co., Ltd. The Toy Factory Co had filed a trade mark application for a square figurative mark that incorporated two Chinese characters and the word “LEPIN”. In the proceedings, LEGO demonstrated the practical steps it takes to ensure its brand value is not damaged or diluted by pretenders.To get more lepin, you can visit shine news official website.
The application for the mark included a specification for: Toys; Building blocks [toys]; Doll’s houses; Dolls’ rooms; Toy vehicles; Radio controlled toy vehicles; Toy models; Jigsaw puzzles; Controllers for toys and Toy robots in class 28. The mark was registered on 1 September 2017.
On 6 February, LEGO Juris A/S (“Lego”) applied to have the mark declared invalid under section 47(2) of the Trade Marks Act 1994 (the “Act”)on the basis that it was registered contrary to sections 5(2)(b), 5(3) and 5(4)(a). The grounds under sections 5(2)(b) and 5(3) were based on the well-known EUTM. Under section 5(4)(a), Lego claimed that its reputation and goodwill entitled it to prevent the use of the LEPIN mark under the law of passing off.
The Toy Factory Co filed a defence and counterstatement in which it made a comparison of the words “LEGO” and “LEPIN” noting that “LEGO” appeared in the Oxford English Dictionary, whereas “LEPIN” did not. It was submitted that LEPIN was the transliteration of the two Chinese characters which appear above it in the mark: “LE” meaning happy; cheerful; laugh” and “PIN” which means “spell; piece; risk” (para 3). It was also submitted that because there were no fixed colour features in the LEPIN mark, it would be distinct in a visual way from the LEGO mark. It was also submitted that the aural similarity was low on the basis that the average parent (who would most likely be the individual purchasing the toys) would consider the word as a whole and would be unlikely to confuse “PIN” and “GO”.
Lego filed evidence from three people which included information regarding the money spent on advertising which incorporated the Lego mark, the money received on various royalties from the licensing of video games and films and the existence of the LEGOLAND Windsor theme park which used the Lego mark. Evidence was also filed showing a comparison of the products side by side and that the Oxford English Dictionary recorded “Lego” as a trade mark. Further to this, it was submitted on behalf of LEGO that the Consumer Service Department had received numerous complaints from the public about the proprietor’s LEPIN products (Para 17). The strong level of evidence is a good example for other businesses of what records should be kept in order to protect a brand.
