Lego’s Community Design Victory

On 24 March 2021 Lego gained
victory with regard to the depicted registered Community design on one of its
toy building blocks. This victory is also an important new step in the
clarification of the quite challenging relationship between technical function
and design protection.

Background to the case

In 2010, Lego applied for a Community design at the EUIPO for a toy
brick with four studs on the upper side of the block. This Community design was
granted by the EUIPO.

Six years later, in 2016 a German company, Delta Sport Handelskontor,
filed an application with the EUIPO seeking to invalidate Lego’s Community
design based on the argument that the features of appearance of Lego’s
Community design were solely dictated by the technical function of the toy
brick (the capability of being assembled with sufficient stability to other
bricks of the set so that it can form part of a toy building).

The EUIPO Cancellation Division initially rejected the application for
invalidity. However, the EUIPO Board of Appeal sided with Delta Sport
Handelskontor and invalidated Lego’s Community design. Lego appealed to the
General Court of the European Union

Decision of the General Court

The decision deals with two different issues related to the question
whether a design is dictated by its technical function.

First, the General Court reminds that a Community design does not
subsist in features of appearance of a product which must necessarily be
reproduced in their exact form and dimensions in order to permit the product to
be mechanically connected to another product so that either product may
perform its function.

However, by way of exception, the mechanical fittings of modular
products may constitute an important element of the innovative
characteristics of modular products and present a major marketing asset, and
therefore should be eligible for protection. Hence a Community design subsists
in a design serving the purpose of allowing the connection of interchangeable
products within a modular system.

According to the General Court, the Board of Appeal failed to assess
whether the requirements of the exception for mechanical fittings of modular
products were met.

Secondly, the General Court holds that a design must be declared invalid
if all the features of its appearance are solely dictated by the
technical function of the product it concerns; however, if at least one
of the features of appearance of the product concerned by a contested design is
not solely dictated by the technical function of that product, the design in
question cannot be declared invalid.

In the case at hand the General Court notes that the Community design in
question has a smooth surface on either side of the row of four studs on the
upper face. This feature of appearance was not included among the features
identified by the Board of Appeal when invalidating the design, although it is
a feature of appearance of the product. The Board of Appeal could therefore not
legally decide that the Lego brick design was invalid.

It is for the applicant for a declaration of invalidity to
demonstrate that all the features of appearance of the product concerned by the
contested design are solely dictated by the technical function of that product.

Conclusion

This decision is to be warmly welcomed by Community design holders of
products with features of appearance dictated by technical function since it
raises the bar to invalidate a design based on its technical function in
comparison to Doceram, the previous
decision on this issue by the Court of Justice. It must thereby be noted that
the deadline for bringing an appeal against the decision of the General Court
before the Court of Justice has not yet lapsed. If an appeal is introduced,
this appeal will only proceed if the Court of Justice itself decides that this
appeal merits examination. If it does so, this would be the first appeal that the
Court of Justice takes up in a matter coming from the EUIPO since the new
filtering mechanism for appeals with the Court of Justice was adopted in 2019.

29 April 2021