It all began back at the start of August 2020 when Amazon in Germany removed the pre-order page from their site, canceled all pre-orders of 75292 The Razor Crest, and issued the following email by way of explanation:
You had ordered the following item (s):
LEGO 75292 Star Wars The Mandalorian, Razor Crest, with Baby Yoda and other minifigures from The Mandalorian, building set
We’re sorry: the items mentioned are currently unavailable and we had to cancel them from your order. Of course, you will not be billed for canceled items.
We apologize for the inconvenience and ask for your understanding.
Despite being reported by StoneWars on August 2nd – and subsequently updated over the coming week – the story went largely unnoticed by the wider LEGO Star Wars community. It wasn’t until the week beginning August 24th – when 75292 The Razor Crest product page on LEGO.com in North America was taken down and pre-order statuses were changed to “contact customer services” just days before the set’s September 1st release – did the rest of LEGO community begin to realize something was afoot.
The next development occurred at the end of the week when LEGO reinstated the European version of the set’s product page, amended all references of “The Razor Crest” to “The Mandalorian Bounty Hunter Transport” in the page’s title and description, altering the URL reference to default-the-mandalorian-bounty-hunter-transport-au-the-razor-crest-nz-the-razor-crest-75292 in Europe and North America and resumed taking pre-orders. Curiously though, it was still The Razor Crest in the Australia-Pacific market.
One notable – and global – side effect is that all of the packaged images have been removed from the set’s product page on LEGO.com.
As word spread through the LEGO community, so did the story (and the original article on StoneWars.de began to recirculate) behind the fracas – it turned out that the Lucasfilm/Disney entity did not have the trademark to “Razor Crest” in Europe, which was instead owned by Michael Gaßmann who had submitted “Razor Crest” as a wordmark with the Deutsche Patent und Markenamt (DPMA) – the German Patent and Trademark Office – on January 24th, 2020 for registration as a union trademark. Once registered, union trademarks enjoy protection in all countries of the European Union for 5 years – even if they aren’t used.
According to Wikipedia, a wordmark is one of the several kinds of trademarks (which also includes brandmark and lettermark) and is a graphical representation of a distinctive word. When registered in Germany and/or Europe, a wordmark protects the word for certain goods, a business and services against identical or similar uses.
Michael Gaßmann, it turns out, is the co-owner of a small toy distributor and retailer in Germany. Founded in 2005, they branched out into customized LEGO minifigures in 2014 before founding ModBrix and expanding into LEGO-compatible bricks. In order to avoid the risk of cloning LEGO sets ModBrix re-produces fan community custom builds and their inventory boasted a 1389 piece Razor Crest for €69.99.
The timeline between January and the start of August is blank except for three dates: Gaßmann’s application was confirmed on May 22nd, allowing him to claim “Razor Crest” as a registered trademark in Germany – and by extension throughout Europe, on July 21st Lucasfilm applied for their own work mark for “Razor Crest” and ModBrix began selling their version of The Razor Crest on August 3rd.
Though the product has been removed from ModBrix online store, a photo is visible in their Facebook gallery and a recent video of their warehouse shows that their version is still being stocked.
Interestingly, Gaßmann’s application only covered the use of Razor Crest in toy building sets and model kits – while Lucasfilm covered all the bases with an exhaustive application – explaining why only LEGO was affected by the disputed term.
This application’s limitations – being applicable in Europe only and constrained to toy construction kits – reveals why the claim only pertains to the LEGO Star Wars 75292 The Razor Crest set within the European Union.
Whether it was Gaßmann who contacted LEGO about the trademark conflict or Lucasfilm realized the situation during their application process, (which at this time remains pending) is unclear.
Fans might remember that the Night Buzzard ended up being renamed 75284 Knights of Ren Transport Ship for unknown reasons. Any suggestion that Gaßmann was involved is unsubstantiated.
Complicating matters is the timing of the Disney+ roll-out and broadcast of The Mandalorian in different parts of Europe.
Originally aired in the US on November 12, 2019 the German broadcast didn’t take place until March 22nd when the first episode was shown on the ProSieben free-to-air digital channel. Two days later it was broadcast on Disney+ when it launched in the country. On top of that, Gaßmann’s application, which took place on January 24th, also pre-dates the official LEGO reveal of the set on February 20th.
While there’s no doubt that lawyers are arguing over who legitimately owns the wordmark in Europe, proving that Gaßmann acted in bad faith – a legal provision that can be enacted if it can be shown the applicant is acting is pursuing illegitimate reasons in order to derive personal gain – is the likeliest avenue of attack, advises Dr. Nikolaus Reber, an international trademark and copyright specialist lawyer at Dr. Roth & Kollegen law firm in Munich, Germany.
Reber’s legal experience in international trademark law includes, among many others, a case between The Hollywood Chamber of Commerce and Mensing department store/Schleifenbaum Design & Project over the unauthorized use of the Chamber’s licensed trademark properties – the world-famous Hollywood Sign and the Hollywood Walk of Fame.
Acting as the legal representative of The Hollywood Chamber of Commerce, Reber successfully argued that the unauthorized use of the Hollywood sign constituted trademark infringements under German laws that prohibit unfair imitation practices combined with the exploitation of reputation.
According to Dr. Reber, the German Patents and Trademarks Office (DPMA) will only refuse an application based on bad faith if supporting evidence is provided during the application process, something that obviously didn’t happen.
However, Gaßmann’s application can be revoked under bad faith if it can be shown that the trademark was used in Germany prior to the original application. That said, bad faith trademark applications can pose a significant issue in Germany, particularly as the threshold for proving bad faith is traditionally high, suggesting that Lucasfilm might have an uphill struggle.
However, Gaßmann’s trademark could be revoked under bad faith principles. If the words used by the previous user represents an asset worthy of protection, if the trademark applicant/owner knows this and nevertheless registers such a word as a trademark in order to disturb the asset of the previous user or to prevent him from using the designation, this may be considered as acting in bad faith.
However, the trademark must be identical or confusingly similar to the sign used by the previous user and must be registered for identical or similar goods or services. In principle, no high demands need to be made on the trademark owner’s knowledge of his interference with the property worthy of protection, which should facilitate the relevant evidence in some cases. Furthermore, a classification of the interference as bad faith presupposes that it has been carried out without sufficient objective reason.
Clearly, bad faith trademark applications can pose a significant issue in Germany and the EU, particularly as the threshold for proving bad faith is traditionally high, suggesting that Lucasfilm might have a lengthy struggle.
This being the law, it’s never as straightforward as you’d expect because, in Germany at least, even if “a third party uses the unregistered sign at the time of application of a trademark does not establish bad faith, even if the applicant must have been aware of this prior use,” leaving Lucasfilm with the duty of showing that their prior use of The Razor Crest had established a legal right capable of protection as well as proving that Gaßmann was aware of it before he applied “for an identical or similar mark without a justifiable reason, in order to disrupt the prior legal right or block the use of the earlier trademark.”
A second situation where bad faith can be assumed comes under prior use and reputation abroad, whereby if Lucasfilm can show that The Razor Crest had acclaim overseas (i.e. outside Germany or the EU) and this was already known to Gaßmann. In favor of Lucasfilm’s case is the stipulation that if “the applicant’s knowledge is reasonably probable and that the intention to use the mark in Germany was obvious due to customs in the industry”, e.g. products related to a television series which was particularly successful in the US then bad faith can be demonstrated.
According to Reber this case could not only develop into trademark litigation but may also involve copyright infringement as ModBrix obviously copied “The Razor Crest” spaceship from the Mandalorian without a license. Potential damages for both, anti-competitive obstruction through bad faith trademark registration and copyright infringement, could be substantial.
In the main, these legal proceedings won’t affect the average LEGO Star Wars fan. That this situation arose immediately before the release of 75292 The Razor Crest/The Mandalorian Bounty Hunter Transport could have delayed the set hitting toy store shelves but it didn’t. It’s also unlikely to create a packaging variation, as Brick Fanatics points out.
While the set name doesn’t matter much in Europe, where it isn’t printed on the box, in the USA the set name appears on the packaging.
In the Asia-Pacific market, the set reached the hands of eager fans without any changes, as our recent combined review of 75318 The Mandalorian & The Child and 75292 The Razor Crest shows.
As the union trademark application was made in Germany, Gaßmann’s approved wordmark has no legal standing in the United States, Canada, or any other LEGO marketing region outside of Europe, there should no running changes made to the set’s packaging.
For now the situation is being handled behind closed doors and the outcome isn’t likely to be revealed anytime soon – if ever. We’ll probably have to wait five years until the union trademark times out and LEGO is ready to release another version of The Razor Crest.
What’s your take on the situation – is it a storm in a teacup or something that Lucasfilm should fight krayt dragon tooth and mythosaur nail to protect? Express your two cents below.
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