Culper Precision, a Utah based gun company, developed a customised semi-automatic gun that that not only appeared to be covered with a multi-coloured Lego-like building brick pattern, but also used a similar ‘Lego’ font for the weapon’s insignia – “Block19” – a play on the name of the well-known pistol manufacturer “Glock.”
Naturally, the Danish toymaker Lego wrote a letter to Culper Precision demanding that it stop producing the gun which looks like it is covered in Lego bricks, and the gun producer obliged and undertook to remove the product from its website.
From an intellectual property perspective, Culper Precision made the right call by conceding to the demands. Had this incident taken place in South Africa, and provided that Lego has trademark protection for its logo, which it does, together with the shape of its brightly-coloured building blocks Lego which is presumed to be one the most well-known toy companies in the world, they would have had an opportunity to enforce their rights through trademark law and the law of passing off.
In terms of section 34(1)(c) of the Trade Marks Act, the rights acquired by the registration of a trademark shall be infringed by the unauthorised use, in the course of trade, in relation to any goods or services, of a mark which is identical or similar to a trademark registered, if such trademark is well known in the Republic and the use of the said mark would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered trademark, notwithstanding the absence of confusion or deception. The fact that Lego is a toy company and children and even adults across the world love and adore these building blocks, a firearm that looks like its endorsed by Lego, would definitely tarnish the brand and its values.
If Lego did not have trademark protection for its logo or the shape of its brightly coloured building blocks, they could also enforce their rights in terms of a passing off cause of action, which protects the good will and reputation of the get up of a proprietor. Lego, would have very little difficulty in proving that Culper Precision has made a misrepresentation to the public that its business or merchandise, is associated or endorsed by Logo and that there is a reasonable likelihood that members of the public may be confused into believing that the business of Culper Precision is, or is connected with, that of Lego. Not to mention the devastating impact that a fatal incident caused by the confusion would have on the toy company’s reputation and goodwill.
