Attack The Block!
Festive cheer for children's (and Dads') favourite, LEGO, as they succeed against Chinese imitator
With Christmas just around the corner and many letters to Santa being populated with various forms of the perennial construction toy, the elves in charge of Danish toy giant LEGO must be particularly delighted to have scored a significant legal victory in China against manufacturers of toys closely resembling Lego's "Friends" range. The company announced its success last week on its website.
The Chinese infringers in that action had manufactured and sold kits branded BELA. Images of comparative examples of LEGO and BELA products can be seen below. The similarities are of course immediately apparent.
The Shantou Intermediate People's Court found in LEGO's favour in copyright infringement claims against the Chinese companies behind a range of BELA products, in respect of elements of their packaging and logos, and also held that the manufacture and sale of the BELA products constituted acts which were contrary to Chinese laws relating to unfair competition, by closely reproducing distinctive decorative elements which consumers would identify with the LEGO "Friends" products.
Lego's press release stated that this was the first time that the company had filed and won an unfair competition lawsuit in China. However, BELA is not the only LEGO imitation coming out of China. Last year, Lego announced that it was also taking action against the Chinese makers of a range of kits branded LEPIN, which have appeared to replicate a number of discontinued LEGO models and, in particular the large and high-value licensed LEGO models from ranges such as Star Wars and Ghostbusters.
No announcement has yet been made by LEGO about the progress or outcome of that case, but this recent result against BELA must surely be cause for some optimism if the case against LEPIN is proceeding on a similar basis.
In early 2017 a court in Beijing had confirmed that LEGO's main logo was recognised as a trade mark in China and the Danish company has opened a new factory in China leading commentators to suggest that the present intellectual property "crackdown" by LEGO in China is part of a strategy to secure its "official" foothold in the Chinese market.
In other markets, LEGO has secured some design rights for its minifigures and of course has very strong brand recognition in Europe and the USA. But it has historically experienced some difficulties in its attempts to broaden the scope of the Intellectual Property Rights inherent in its kits themselves, at least since the expiry of its 1958 patent, although the company has been keen to emphasise more recently that it is prepared to "work with" or "tolerate" some third parties provided that they act "fairly" in making and selling products which compliment its own range (e.g. bespoke low-volume customised accessories), or fill product gaps that LEGO themselves do not wish to pursue (e.g. military models).
Whatever the reason behind these recent moves in China, LEGO will no doubt have reason to feel encouraged by the successful outcome of this case against BELA, beyond its immediate impact on the particular infringers. Often, a brand which faces a number of "copycats" can make a lot of headway when it succeeds in obtaining a Court order against just one such imitator, which then serves both as a deterrent and as a signal that the brand owner takes its intellectual property rights seriously.
Thus, although of course trade mark litigation (whether in China or here in the UK) can sometimes be in the short term costly and protracted, the smart brand owner may view that expenditure of money and time as an investment in the wider protection of their brand and the promulgation of their own reputation for enforcement.
This article is for general guidance only. It provides useful information in a concise form. Action should not be taken without obtaining specific legal advice.