The LEGO-saga continues brick by brick

LEGO is not only one of children’s favorite toys, but also legally one of the most interesting playgrounds for understanding the thin boundaries between design protection and excluded protection for technical function. And not to forget the so-called “LEGO-exception” for modular systems under design law. Time to play with recent case law.

 

Under the Community Design Regulation (“CDR”),[1] the appearance of a product in whole or in part may be protected if it is novel and has individual character.[2] To avoid an overlap with patent law, protection is excluded for designs whose appearance is solely dictated by their technical function,[3] or where the appearance is necessary to connect two products.[4] Nevertheless, as an exception to this exclusion, connecting elements of modular systems can still be protected under design law.[5]

LEGO, being a modular system in which the bricks may be connected in several different ways, is a product that lends itself perfectly to exploring the boundaries of European design law, and more specifically, the thin line for excluded protection for technical function and the modular exception to this exclusion (sometimes even called the “LEGO-exception”).

As the LEGO-saga continues, it is time to dive deeper into some interesting aspects of recent decisions of the General Court of the European Union (“GCEU”), as well as a newly pending referral to the Court of Justice of the European Union (“CJEU”) for a preliminary ruling.

 

• GCEU-case “Delta Sport Handelskontor GmbH v. Lego”

In this case, the LEGO-design at stake was registered community design no. 1664368‑0006:

In its decision[6] of 24 March 2021, the GCEU held that a design must be declared invalid if all features of its appearance are solely dictated by the technical function of the product it concerns (see CAPE IP newsletter).

This was repeated by the GCEU in its more recent decision of 24 January 2024:[7]

“[…] a design is declared invalid, in accordance with the provisions of Article 8 of Regulation No 6/2002, only in the case where all of its characteristics are excluded from protection. If at least one of its characteristics is protected, in particular due to the application of the exception provided for in Article 8(3) of that regulation, the design remains valid”.

In addition, the GCEU reminded that for a holder of a registered community design wishing to rely on the modular exception to the exclusion of protection for technical function, it suffices that the design serves the purpose of allowing the multiple assembly or connection of mutually interchangeable products within a modular system. Contrary to what was claimed by Delta Sport Handelskontor GmbH, the GCEU followed LEGO and decided that the holder does not have to prove that the modular system fulfills the validity requirements of novelty and individual character, as this would be contrary to the very logic of the system of community designs.

 

• CJEU-referral of LEGO-case by Hungarian court

On 18 March 2024, a Hungarian court referred several questions to the CJEU regarding the interpretation of the modular exception in infringement cases.[8] LEGO initiated infringement proceedings against the company Pozitív Energiaforrás (an importer of toy building sets) based upon its registered community designs:

 

 

The Hungarian court noted that LEGO had expired patents that protected an invention with the identical purpose as its community design at stake and wondered whether the modular exception in the CDR[9] grants the holder a right similar to that of a patent. In light thereof, the Hungarian Court seeks clarification on the technical skill of the “informed user”, whose overall impression of the design must be compared with that created on him by the (alleged) infringer’s product.

It will be fascinating to see how the CJEU deals with this referral.

 

• Conclusion

As illustrated by the LEGO-saga, companies with lapsed (valuable) patents seek alternative routes to continue legally protecting their products. In this interplay, design law has proven to be a valuable tool. The LEGO-saga shows that companies can do so with success, especially when the modular exception is at stake.

Well played, LEGO.

 

CAPE IP

 

26 June 2024

[1] Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs.

[2] Articles 5 and 6 CDR.

[3] Article 8(1) CDR.

[4] Article 8(2) CDR.

[5] Article 8(3) CDR.

[6] CJEU 24 March 2021, T‑515/19 (Lego v. EUIPO and Delta Sport Handelskontor GmbH).

[7] Delta Sport Handelskontor GmbH. V. EUIPO and Lego.

[8] Article 8(3) CDR.

[9] Article 8(3) CDR.