This post is all about Mette Andersen's insights into the LEGO Group. For me, this was one of the most fascinating and informative talks. Whilst it was focused on the LEGO brand protection experience, the lessons that Mette shared provide an excellent framework for all brands on their IP journey. I am sure IPKat readers will find the story similarly inspiring.
The business was aware of the importance of IP rights from the moment they made their transition from wooden toys to plastic bricks with the well known circular connecting tubes that enable everything from the Death Star to Hogwarts to be created with relative ease.
Because the LEGO Group is such an established business, many of these rights have now expired. For example their patent over the tubes and the way in which they interact expired in 1978! Mette took the audience through the five stages and IP strategies which have been essential to the company’s success.
1 You need IP rights
As the patent has long since expired, the main IP focus is on trade marks. In particular, a sound mark and the mini figure 3D mark (see above). There are also several trade marks which protect the classic plastic brick in square and rectangular form in relation to related products and merchandise (the rectangular brick is also protected in red - see left).
The business also has a wide range of registered Community designs for everything from the famous storage container through to specific LEGO elements.
In addition to the trade mark and designs portfolio, the business has a large number of domain names. They are partly in order to protect against third party infringers (and in many instances as a result of past settlements). Inevitably this is an administrative hassle but it is worth it in order to keep the names out of circulation.
2 Enforce those rights
Tyco famously launched a rival product as soon as the patent expired. Since then, the LEGO Group’s IP enforcement experience has slowly developed from competitor counterfeits in the 1980s to the use of a similar but not identical logo in the 1990s (i.e. a red square but with a different brand name).
The 3D trade mark for mini figure is a particularly important part of their portfolio.
As with all brands, the internet has created a range of brand protection problems for the LEGO Group. Facebook and social media sales are some of the problems arising in recent years. This is because the social media ads are only up for a very short period of time so it is difficult to react and do anything about it within the short timeframe.
Mette shared various examples of infringers who use the LEGO trade mark as a description in order to get traffic to their product listing even if the product itself isn't necessarily infringing. She also highlighted the LEGO Group's particular successes in China this year - it was able to rely on infringement of copyright in its models to win against cases against two Chinese companies.
3 Enrich the brand (& then everything is awesome!)
The business has been hugely successful in both its in-licensing of famous franchises such as Harry Potter and Star Wars and its out-licensing for everything from LEGOLAND to computer games and, most recently, the LEGO Movie.
4 Build appropriate social media channels
For obvious reasons, it is extremely important that LEGO social media is child friendly. They have set up a system where chats between children are safe due to being pre-approved by parents. There is a more adult oriented site for over 13 year olds to share their creations. Even on the adult site, no inappropriate creations are allowed!
To improve user engagement, the business has also launched LEGO ideas. This gives members of the public the opportunity to send in ideas for new products. If an idea gets more than 10,000 votes the LEGO Group will seriously consider whether to make a physical product. For example, they made a set with LEGO Birds. The idea originator gets 1% of the royalties - with LEGO sets that can be a substantial amount even for a fairly niche idea.
5 Fans!
The LEGO Group recognises the importance of its fans so much that they have their department. With non-commercial fan sites they don’t tend to take action although they may reach out gently to explain the trade mark rules. There is also an element of self policing between the fans.
Questions
Nowadays they don't see lots of proper counterfeit LEGO products. They’re mostly knock offs. The customs experience varies hugely with the location. Mette singled out Czech and US customs for being particularly active.
The LEGO Group has invested in training for customs. They have created a dedicated video which explains how to recognise a genuine compared to a fake LEGO product or a mini figure etc. Relatively speaking the LEGO Group has a lot of seizures.
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com