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Intellectual property: What we can learn from Chinese LEGO copy LEPIN

  1. Copyright and intellectual property
    Copyright and intellectual property
    FrazerBye

    FrazerBye UKBF Regular Full Member

    Posts: 240 Likes: 77
    5 |

    What protects your products from cheap imitations? Frazer Bye, chartered trade mark attorney at Franks & Co, has taken a look at Chinese Lego imitator Lepin and the intellectual property rights that protect a Star Wars product.

    Following a recent report on the BBC into Chinese LEGO Copycats, we purchased a copycat LEGO product from a website well-known for directly sourcing products from China. The selected product was branded LEPIN STAR WNRS MICROFIGHTERS SERIES3.

    The genuine LEGO arrived in a cardboard box, whereas the LEPIN was packaged in a plastic bag. However, once each of the two models were built the similarities were striking as well as the lengths the producers of the LEPIN went to in creating a near identical copy (the LEPIN does not appear to simply be the same product that has 'fallen off a lorry' from a LEGO factory, there are differences).

    Patents, registered, and unregistered designs

    A cursory search of the European and UK patent registers reveals Lego has 109 UK or European Patent applications and Lucasfilm four, published since 1997 and two registered designs that protect individual parts of the LEGO kit.

    Parts of the LEGO kit are also protected by UK unregistered design right, which arises automatically and lasts either until the end of 15 calendar years from the date of first recordal or the end of 10 calendar years from the date of first sale.

    Only the new elements of the LEGO product are protected by unregistered design right, potentially the mini-figure’s helmet (noting that it appears similar to known helmets), the front plastic disc (less the surface ornamentation, less the fixing point), and the overall shape of the product.

    This report does not investigate whether the LEPIN product falls within the scope of any patent applications. Please see the full article for an assessment of design rights.

    Trade marks 

    One example, an EU registration, comprises the LEGO logo shown below.

    The LEPIN logo (also below) is phonetically dissimilar, visually dissimilar (due to the spellings and Chinese characters) and conceptually dissimilar as LEPIN has no meaning in the English language whereas LEGO is synonymous with children’s building blocks.

    The below trade mark registration is arguably not infringed by the LEPIN logo.

    There are also 3D trade marks against individual LEGO parts, including the mini-figure. The 3D figure trade mark would be infringed by the use of a similar 3D shape for similar goods where there is a risk of confusion on the part of the public.

    The LEPIN mini-figure is very similar, differing only in the facial expression (grim-faced rather than smiling). As the marks are similar, and the goods identical, it is likely there would be a risk of confusion on the part of the public - the 3D figure trade marks are therefore likely infringed.

    Passing off

    Passing off is a UK common law tort that protects unregistered trade mark rights. The use of the tm symbol by a rights owner denotes that the mark is intended to be a trade mark even if not registered.

    On the LEGO box, there are a number of marks labelled with tm including STAR WARS™.

    To be successful in a claim of passing off Lucasfilm would need to establish:

    1. That they had built up goodwill and reputation in the unregistered STAR WARS mark. This could be for example, through sales of toys bearing the mark
    2. That the use of the STAR WNRS mark would be a misrepresentation and cause confusion in the market place. This seems plausible as the marks are visually very similar, start and end with the same letters, and are only one letter different
    3. That damage would arise to the goodwill. This also seems likely due to the similarity of the products

    Therefore, it is likely that Lucasfilm would be successful in a passing off claim.

    Copyright

    Copyright is infringed where a substantial part of a copyright work is reproduced without the owner’s permission. A copy need not be a 1:1 scale reproduction. If a substantial part is reproduced, an infringement may be present.

    The cover images are not identical but both present substantially the same intellectual creation ie. similar building block toys arranged at an angle, in a space scene, flying away from an explosion and launching two missiles. Therefore, it is highly likely to constitute copyright infringement.

    Enforcement

    Should the parties go to court then potential remedies include:

    • Injunction against further infringing acts (eg. to halt importation)
    • A declaration of infringement
    • Damages for lost sales
    • Account of profits
    • Delivery up of infringing goods
    • Order for erasure of infringing registered trade marks
    • Order for destruction of infringing goods

    Conclusions

    It is inexpensive and easy to obtain the LEPIN product in the UK. LEPIN have clearly gone to great efforts to reproduce the LEGO product, whilst making attempts to avoid infringement. Regardless, the LEPIN product may infringe the following rights:

    • UK and EU patents
    • UK and EU registered trade marks
    • Passing off
    • UK and Community registered designs
    • UK and Community unregistered designs
    • Copyright

    The EU Intellectual Property Office estimate that €1.4bn in revenue is lost per year due to the sale of counterfeit toys and games. This area is clearly big business and rights holders will be keen to ensure their brands and products are protected, especially as the lack of a CE or BSI kite mark on the LEPIN product means that quality of LEPIN toys cannot be guaranteed.

    From our analysis, it can plainly be seen how LEGO and Lucasfilm have built up a thicket of intellectual property rights around this single product which LEPIN have made attempts to circumvent. LEPIN probably succeed in one or two cases, but their product fails to avoid all of the rights.

    As the original LEGO patents and designs have expired (patents last for 20 years, designs for 25 years), previously patented LEGO kits and designs pre-dating 1997 and 1992 respectively are free to use.

    If you wish to know how to protect your rights please contact a European or Chartered Patent or a European or Chartered Trade Mark Attorney. We will be able to tell you what rights are available to you and how to secure your products in a thicket of different of Intellectual Property rights.

    Check out our website to see a full version of this article.

    #0
  2. japancool

    japancool UKBF Big Shot Full Member

    Posts: 3,372 Likes: 647
    Be all that as it may, what can Lego do to prevent what you did happening - that is, buying it, as an individual, from a Chinese site and importing it into the UK?

    Short of taking it up in court in China, and that doesn't seem to be a course of action with much promise of success.

    It's one thing to prosecute or take action against someone who imports to the UK to sell, but there's no practical protection from direct overseas sellers.
     
    Posted: May 6, 2017 By: japancool Member since: Jul 11, 2013
    #2
  3. FrazerBye

    FrazerBye UKBF Regular Full Member

    Posts: 240 Likes: 77
    @japancool this article is an abridged version of my article which is available to download here:
    http://www.franksco.com/services/ca...ingement-of-lego-intellectual-property-right/

    I have asked @ChrisGoodfellow to amend the above (prior to your question) - the amended article should include an enforcement section.

    To answer your question though, in the UK the rights holders (e.g. Lego, Lucasfilm, or Disney, all of who have a stake in either LEGO or STAR WARS) once aware of the infringement can apply for an injunction against importation to prevent further infringement, as well as request delivery up of the infringing goods for destruction, and either request damages or an account of profits for those products already sold in the UK.

    Separately, LEGO could also inform trading standards who may be able to intercept imports and impound them at customs.

    LEGO, who have deep pockets, also appear to be trying to tackle LEPIN at source:
    https://brickset.com/article/23648/the-lego-group-takes-action-against-clone-brand-lepin
     
    Last edited: May 8, 2017
    Posted: May 8, 2017 By: FrazerBye Member since: Feb 4, 2015
    #3
  4. ChrisGoodfellow

    ChrisGoodfellow Editor Staff Member

    Posts: 134 Likes: 37
    Updated now!

    Thanks again @FrazerBye
     
    Posted: May 8, 2017 By: ChrisGoodfellow Member since: Jul 10, 2014
    #4
  5. japancool

    japancool UKBF Big Shot Full Member

    Posts: 3,372 Likes: 647
    @FrazerBye thanks, but in practise, Trading Standards or HMRC will only intercept parcels coming from a known address (and they're pretty poor at doing that, too) and/or being imported in volume. There's not a lot that actually stops an individual from going onto a site based in China, purchasing one of these and getting it sent here to the UK.
     
    Posted: May 9, 2017 By: japancool Member since: Jul 11, 2013
    #5
  6. FrazerBye

    FrazerBye UKBF Regular Full Member

    Posts: 240 Likes: 77
    You're correct that there is little that LEGO can do to prevent a private user travelling to a different jurisdiction and purchasing a product that would infringe rights in the host country and bringing it back with them. This likely falls under the private use exceptions just as if I were to create my own copy in a shed for my private enjoyment.

    I did not personally arrange the importation of the LEPIN product, if LEGO were to make a test purchase they could potentially obtain an injunction against the importer, but as you say enforcement of this may be difficult. This is probably why they are taking action against LEPIN in China.
     
    Posted: May 10, 2017 By: FrazerBye Member since: Feb 4, 2015
    #6