Lego Warning by Hogan Lovells: what brand owners should learn from it
LEGO is probably the best-known brand of building blocks. Children of all ages (including the author of these lines) are fascinated by increasingly complex technical devices.
LEGO is so big and so well-known that the brand "LEGO" already almost Synonym for "Terminal block" is. This happens from time to time. The vernacular says ZEWA when it means paper towel, it says TEMPO when it means handkerchief and WALKMAN or IPOD were also shorthand for "portable music player" for a while. If you want to search the internet GOOGELT, off-road vehicles are called JEEP and an ASPIRIN is commonly used for headaches. If you are unsure of your spelling, look it up in the DUDEN, the patio is cleaned with KÄRCHER, lips are cared for with Labello, smears on the school desk are particularly long-lasting with EDDING and bland food is enhanced with MAGGI. The same applies to NIVEA, NUTELLA, PAMPERS, POST-ITs, OHROPAX, ROLLERBLADEs, TESA, UHU and SPÜLI.
Dangerous for trademark owners: Brand name becomes generic
For brand owners, it is of course nice when the Appreciation of its own product is so great that the product name is used for an entire genre. But as great as the emotional joy is, the need for trademark protection is just as great:
as a result of the conduct or inactivity of its owner in the course of business to common name of a product or service for which it is registered.
On the other hand, well-known brands enjoy special protection. Thus § Section 14 (2) No. 3 MarkenG and Art. 9 para. 2 no. 3 UMV for well-known protection even if the goods and services of the infringing mark are dissimilar to those for which the well-known mark is registered.
What can a trademark owner do to prevent his trademark from becoming generic?
It follows from Section 49 (2) No. 1 MarkenG or Art. 58 (1) (b) EUTMR that a trademark that has become a generic term will only be canceled if this has occurred due to inactivity (or as a result of the trademark owner's conduct).
Anyone who does not pursue trademark infringements and thus tolerates the dilution of their trademark is deemed to be inactive within the meaning of the standard.
LEGO-WarningAgainst the generic concept!
LEGO is therefore in the Dilemma. As nice as it is that it feels like no other manufacturer apart from LEGO offers clamp bricks, there is a great danger that the clamp brick manufacturer's own inactivity will be its undoing.
Only those who Trademark infringements consistently pursued and thus tried everything in his power to prevent his name from becoming generic.
It is therefore understandable from the trademark attorney's point of view that LEGO sends warning letters to the Heroes of the stones or Johnny's World aka. stone made if they refer to competing products from COGO, QMAN or LINOOS as "LEGO".
Problem: Lawyers often only think in terms of claims.
Lawyers learn to think in terms of claims right from the start of their studies. So the question he always answers is: Does A have a claim against B?
The answer to this question is relatively simple: Yes, A can require B not to refer to other clamping bricks as "LEGO".
And if that's the case, then I can do that by means of a Warning claim. At first glance, the lawyer is also doing something good for the client, as he can Protects brand from dilution and saved from deletion.
Lawyers and marketing?
However, times have changed. This does not mean that the Warning is no longer the method of choice these days. In 99 % of cases, it solves trademark law problems quickly and accurately.
However, the world is turning. And so we lawyers also have to deal with YouTube, TikTok, Instagram and Influencers have to deal with. And we must quickly learn that there are forces that are stronger than laws.
The damage suffered by LEGO as a result of the massive shitstorm is likely to be far greater than the trademark benefits of the Warning.
For some time, Hero of Bricks and Johnny's World were probably most concerned that they would no longer be supplied by original LEGO, but now the entire brick-building community a) knows all the third-party manufacturers, b) is convinced of the quality at a reasonable price and c) avoids LEGO as much as possible on principle. Last but not least, d) the Hero of Bricks and Johnny are probably the No. 1 and No. 2 addresses to go to when children of all ages want to look beyond the edge of the brick plate.
Problem: the Streisand effect
As Streisand effect is the term used to describe the sociological phenomenon when a clumsy attempt to suppress unwelcome informationThe opposite is achieved in that the procedure generates public attention, which significantly increases interest in the information in question and its dissemination.
The situation is similar here: the clumsy attempt to simply ban young and rebellious YouTubers from competing with LEGO has made them and their retailers big in the first place. Whether or not the young brick enthusiasts ever use the word "LEGO" again is irrelevant.
Prime example: Jack Daniel's
In 2012, Jack Daniel's noticed that a certain "Patrick Wensink" had published a book called "Broken Piano for President" under the following logo:
Instead of a Warning In addition to a request for payment, they decided to write to the car and initially express their feel honored by the use of the logo. However, as an author, Wensink certainly knows that you have to protect intellectual property if you want to keep it. And so it would be nice if Mr. Wensink would refrain from using the logo in the next issue. To sweeten the deal, they immediately agreed to cover the costs of the new design.
Naturally, this charming "Warning" immediately went viral. The hearts of Jack Daniel's really flew. And the advertising impact is likely to be significantly greater than with any advertising measure that could have been used for the cost of the Warning and the new design could ever switch.
Is "LEGO" a generic term or not?
The answer to this question can only be provided by an expert opinion. However, I have the greatest doubts that such an expert opinion will come to the conclusion that "LEGO" is synonymous with "clamping brick" and therefore a generic term. In fact, beyond the brick bubble, Lego is still simply the only supplier. The many competing products are only available to customers on the Internet or in rare brick-and-mortar stores. Beyond that, every Karstadt, Real, Kaufland, Intertoys (...) exclusively sells Lego products. Lego should therefore not be the genre for the masses, but rather Lego - the monopolist.
And, as previously mentioned, only a brand that does not defend itself against attacks can become a generic term. But that's what Lego does.
As a result - even if this sounds abstruse now - the classic way would be "immediately issue a warning and 10 days later issue the temporary injunction" would probably have been best. Then there would have been peace and quiet two weeks after the announcement. But now the bubble is boiling and the damage is immense.
Conclusion: It pays to think outside the box!
This example clearly shows that the best lawyer is not always the best businessman. An intellectual property Warning always needs to be well thought out. We would be happy to discuss with you the most effective and best way to achieve your goals. If you would like to talk to us about your brand issue, Contact us You are welcome to contact us.