(image source: https://boonbeton.nl/ )
The LEGO Group takes action not only against counterfeit building bricks, but also against the (commercial) use of its word mark ‘LEGO’ outside the toy market. A recent substantive case before the District Court of The Hague centred on the fact that Boon Beton was offering concrete stacking blocks online using terms such as ‘Lego’, ‘concrete Lego bricks’ and ‘concrete Lego blocks’. The crux of the matter: LEGO is challenging, on the basis of its word mark, the way in which Boon Beton presents its products and makes them discoverable, in particular through the excessive and SEO-driven use of “LEGO/LEGO blocks” in web content.
What were the legal issues involved?
LEGO – more than any other company – is constantly working to protect its (trademark) rights. One of its greatest concerns is that both the bricks themselves and the word (and therefore the trademark) ‘LEGO’ might lose their status as a brand name and become a generic term. When a trademark – intended to distinguish the products of a particular company – comes to be associated in common parlance primarily with a type or category of product, it loses its distinctive character and ‘dilutes’ into a generic term. Think of Luxaflex, Aspirin, Vaseline and Post-it: all once brand names, but (in everyday language) often used as generic terms.
LEGO is terrified that the LEGO brand will become a generic term, and therefore takes active (and usually effective) action against parties who use ‘LEGO’ indiscriminately as a generic term, search term or marketing label. In the present case, LEGO based its claims primarily on the protection of well-known trade marks: even where there is no direct risk of confusion (after all, one would not readily assume that the Danish toy manufacturer has ventured into the world of concrete products), the use of a similar sign may be prohibited if it results in an unjustified advantage being derived from the brand’s reputation (‘free-riding’) and/or if it undermines the distinctive character or reputation of that brand (for example, through dilution). The crux of this ground is therefore that it is not only a question of who is offering the product, but above all of how the ‘LEGO’ sign is used in the offering and what effect this has on the brand function and image of LEGO.
Boon Beton argued (in short) that ‘(concrete) Lego blocks’ has long been a common term in the construction sector for stackable, modular concrete blocks, and that its use is therefore descriptive. In its counterclaim, it sought a declaration that there had been no infringement and that its use falls within the scope of the exception for descriptive use.
The District Court of The Hague
The court took as its starting point that the LEGO trade marks are well-known trade marks and that the signs used are similar to LEGO. The real debate centred on (i) unfair advantage/free-riding, and (ii) whether Boon Beton could rely on fair, descriptive use.
1) Free-riding through discoverability and appeal
The court inferred from Boon Beton’s own statements that the use of “LEGO/LEGO bricks” was (partly) motivated by Google search visibility and commercial benefits.
It was argued, without contradiction, during the proceedings that Boon Beton had stated that companies would continue to use the word ‘LEGO’ “until the court has handed down a ruling”, and that using ‘LEGO’ meant they were “easier to find and appear more frequently on Google”, and that signing the agreement would mean they would be “less easy to find”, which would cost them “turnover”.
The court characterised this as riding on the coattails of LEGO: Boon Beton capitalised on the appeal and reputation of the well-known brand, thereby gaining an unjustified advantage.
2) Beschrijvend gebruik is mogelijk — maar kent grenzen
Important: the court recognised that LEGO must tolerate descriptive use of its trade mark to a certain extent, for example when a supplier explains, on a one-off basis, that products are modular in nature ‘with studs, like Lego bricks’.
But that space is bounded by:
- the way in which LEGO is referred to;
- the number of references.
In this case, the “extensive use” on the website was not regarded as fair in trade and commerce; the court described the conduct as “unfair”. Consequently, the reliance on the defence of descriptive use failed.
The outcome: A ban and full legal costs (which can be quite substantial).
Why is this ruling relevant to online marketing and SEO?
This case shows that, in the case of well-known trade marks, the risk arises not only where there is a likelihood of confusion, but also when a third party uses the trade mark as a means of enhancing discoverability and appeal.
In practical terms:
- An occasional, illustrative comparison (“such as Lego bricks”) may be justifiable in certain circumstances.
- The systematic positioning of a product as ‘(concrete) Lego bricks’, through repeated use in titles and texts and as a strategy to improve discoverability, can be seen as free-riding.
Do you have any questions about trade mark law, or would you like to discuss the protection of packaging, design or other signs? Please feel free to contact Thomas Kriense at Guldemond Advocaten.
