22 March 2019Trademarks

Lego scores TM victory at UKIPO

The UK Intellectual Property Office (UKIPO) has handed a victory to Danish toymaker Lego after it invalidated a Chinese rival’s ‘Lepin’ trademark.

UKIPO issued its cancellation  order on Tuesday, March 19.

According to the office, Shantou Chengai District Longjun Toys Factory’s‘ Lepin’ products bore “almost identical” designs to Lego’s.

Lego applied to have the ‘Lepin’ mark cancelled in February last year. Longjun Toys issued a counterstatement challenging Lego to prove genuine use of its mark, but did not submit any further evidence to the IPO throughout the proceedings.

The Danish toymaker presented evidence of Lego sales during the five year period prior to the invalidation proceedings.

In its decision, the IPO found that there was a likelihood of confusion between the marks. Although there is no protected colour element in Lego’s mark, the ‘Lepin’ logo uses the “the same colours as the applicant’s mark in a highly similar structural way”, the decision said.

The IPO found that there was likely to be “indirect confusion” among consumers. Although average consumers would not understand the Chinese marks on the ‘Lepin’ mark, they were likely to assume ‘Lepin’ was a “a ‘Chinese’ version” of Lego’s products.

According to the Danish company, it also received multiple complaints from customers referring to the Chinese company’s “knock off Lego” and in some cases, challenging Lego to take steps to remove ‘Lepin’ from the market.

The IPO noted that the perception that Lego was “not doing enough” about the infringing activity could damage the company’s brand, giving ‘Lepin’ an unfair advantage.

The office awarded costs of £3100 to Lego.

In a statement sent to WIPR, Peter Kjaer, general counsel at Lego, said that the decision "sends a clear message to anyone considering copying our trademarks or intellectual property".

WIPR has contacted Longjun Toys for comment.

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More on this story

22 January 2020   Lego has won a substantial Chinese copyright judgement after a court upheld all of the first-instance rulings on 18 existing infringement claims, originally handed down in favour of the Danish toymaker against a Chinese rival’s ‘Lepin’ trademark.