On 2 February 2010, LEGO registered a design for its world-famous „building elements of a toy construction set“ in the register of the European Union Intellectual Property Office („EUIPO“).
On 8 December 2016, the company Delta Sport Handelskontor GmbH filed an application for a declaration of invalidity of the design in question under Article 52 of the Community Designs Regulation. The company claimed that all the features of appearance of the product concerned by the contested design were solely dictated by the product's technical function.
On 30 October 2017, EUIPO rejected this application – it took the view that the technical function of the building block was to be interconnected with other building elements, and Delta Sport Handelskontor had not proven that the fulfilment of that function was the only factor which determined the features of appearance of the product to which the contested design related. In these proceedings, EUIPO stated that the construction set corresponded to the definition and that it was not necessary to declare the contested design invalid, against which Delta Sport Handelskontor appealed.
By decision of April 2019, the EUIPO Board of Appeal upheld the appeal, annulled its previous decision and declared the contested design invalid, reaching the following conclusion:
„All the features of appearance of the product to which the contested design relates are dictated solely by the technical function of that product, which is to allow it to be assembled with, and disassembled from, other bricks of the construction set.“ By this statement, EUIPO decided on the cancellation of the design in question.
LEGO responded to the decision on the cancellation of the design by bringing an action before the Court of Justice of the EU.
What does the regulation say?
Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs defines a design as the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.[1]
Following on from the above definition, the General Court, which ruled in the matter, stated in its judgment:
„Under the regulation, 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 in which the design is incorporated or to which it is applied to be mechanically connected to, placed in, around or against another product so that either product may perform its function. By way of exception, however, the mechanical fittings of modular products may nonetheless constitute an important element of the innovative characteristics of modular products and represent significant marketing values, and should be eligible for protection. A Community design therefore subsists in a design serving the purpose of allowing the multiple assembly or connection of mutually interchangeable products within a modular system.“
In the view of the General Court, the EUIPO Board of Appeal failed to examine the relevance of applying the exception on which LEGO relied in the first proceedings before it. However, neither the Community Designs Regulation nor the rules of procedure of the EUIPO boards of appeal specify the conditions for applying that exception, on the basis of which the General Court considers that LEGO could not have acted belatedly when it relied on it for the first time in the proceedings before the Board of Appeal, and adds that the Board of Appeal acted incorrectly, because it should have assessed whether the conditions for applying the exception were satisfied in this case.
When can (and must) a design be cancelled?
A design must be cancelled if all the features of its appearance are dictated solely by the technical function of the product to which it relates, but if at least one feature of appearance of the product concerned is not dictated by the technical function of that product, the design concerned cannot be cancelled. The building brick in question has, on its top side on both sides of the row of four studs, a smooth surface, and the General Court finds that this feature is not among the features identified by the Board of Appeal, even though it is a feature of appearance of the product.[2]
Further grounds for cancellation are also set out in the already-mentioned Community Designs Regulation. In addition to the grounds mentioned above, it also lists cases where:
- the design does not correspond to the definition under the regulation in question;
- the design does not meet the specific requirements of the regulation;
- on the basis of a court decision, the holder is not entitled to the Community design;
- the Community design is in conflict with an earlier design which has been made available to the public after the date of filing of the application or, if priority is claimed, after the date of priority of the Community design, and which is protected from a date prior to the said date by a registered Community design or an application for such a design, or by a registered design right of a Member State or an application for such a right;
- a distinctive sign is used in a subsequent design, and Community law or the law of the Member State grants the holder of that sign the right to prohibit its use;
- the design constitutes an unauthorised use of a work protected under the copyright law of a Member State;
- the design constitutes an unauthorised use of any of the items listed in the "Paris Convention" for the Protection of Industrial Property, or of symbolic signs, flags and coats of arms other than those covered by that convention which are of particular public interest in the Member State concerned.
What position did the General Court take?
In its judgment in Case T-515/19, the General Court found that the EUIPO Board of Appeal had infringed the provisions of the Community Designs Regulation by failing to identify all the features of appearance of the product, and that it had also not been proven that all those features were dictated solely by the technical function of that product.
LEGO therefore gained a chance of retaining the design of the construction brick. We should find out soon how the proceedings will end and whether EUIPO will ultimately apply the exception contained in the legislation to this case.
[1] Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ EU L 3, 2002, p. 1; Special edition 13/027, Art. 3(a)).
[2] Statement of the General Court in Case T-515/19.