Lego, The Block of Discord

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On 24 March 2021 the European General Court (EGC) overturned the 10 April 2019 decision of the Board of Appeal of the European Union Intellectual Property Office (EUIPO) invalidating a design for one of the blocks of the famous Lego building set.

The dispute concerned a Lego plate block, one with a central row of four studs on the upper face of the brick which is often used as support for figurines. This piece had been registered as a Community design in November 2010. In 2017, the German company Delta Sport Handelskontor GmbH filed an application for invalidation of this design invoking the functional character of the brick based on Article 8(1), of Regulation (EC) n° 6/2002 on Community Designs.

First of all the request was rejected in 2017, prior to the Board of Appeal of the EUIPO, in its decision of 10 April 2019, finally concluding in favour of the applicant, considering “that all the features of appearance of the product concerned by the contested design were solely dictated by the technical function of the product, namely to allow assembly with, and disassembly from,  the rest of the bricks of the set”, and consequently pronounced the invalidity of the design constituted by the Lego block. The Danish company then appealed against this decision.

On 24 March 2021(1), the General Court quashed the decision of the Board of Appeal and thus overturned the invalidation of the Lego plate design. According to the Court, the Board of Appeal did not correctly apply the exception under Article 8(3), that is to say the exception for parts of modular products. Nor did it take into account all the features of the appearance of the block.

On the features of appearance and technical functions referred to in Article 8(1) of the (EC) Regulation

The General Court considers that three points must be examined in order to preserve the effectiveness  of Article 8 : the technical function must be determined, all the characteristics of the product must be identified and, finally, a determination must be made as to whether these characteristics are indeed imposed by this technical function.

The General Court, after recalling that there can be no design rights for features of the appearance of a product that are exclusively dictated by its technical function, stated that it was up to the applicant for a declaration of invalidity to demonstrate this and that it was up to the EUIPO to make a finding.  The General Court stated that the Board of Appeal failed to identify a feature which is independent of the appearance of the product, namely the smooth surface on either side of the row of four studs on the upper face of the plate block. So, according to the EGC, given that all of the features of appearance of the product had not been identified, and that it « did not establish that all of those features were solely dictated by the technical function of that product (…), « the design at issue cannot be declared invalid »

On mechanical fittings of modular products within the meaning of Article 8(3)

This is the first time that the General Court of the European Union has had the opportunity to rule on the application of Article 8(3) of Regulation n°6/2002.

It will be recalled that this provision is an exception to Article 8(2) which provides for the absence of design protection for features of the appearance of a product that must necessarily be reproduced in their exact shape and size in order for that product to be connected to, placed in or around, or brought into contact with another product, so that each product can perform its function.

Firstly, the EGC considered whether this exception could be invoked for the first time before the Board of Appeal. In this respect, the EUIPO argued that Article 8(3) must necessarily be invoked by the proprietor of the contested design, since it constitutes a “defence”, and that it cannot be relied on, for the first time, before the Board of Appeal.

The Court nevertheless notes that Article 8(3) of Regulation n° 6/2002 is not expressly mentioned in the provisions of Delegated Regulation 2018/625 and in particular in Article 27(3) thereof, cited by the EUIPO as providing the rules of procedure of the Boards of Appeal. The latter provision refers to three types of specific claims or applications which must be lodged at first instance. However, Article 8(3) of Regulation n° 6/2002 is not expressly referred to in this Article 27. The benefit of the exception provided for in Article 8(3) may therefore be invoked for the first time, before the Board of Appeal, to contest an invalidity decision or as a defence.

The Court then considered that in order to determine whether Article 8(3) is liable to apply, it must first be examined whether the design falls within the scope of other provisions of Article 8 which could impede its application. Thus, the Court notes that, if the holder of the design relies on Article 8(3), he also admits that the features of the design fall within the scope of Article 8(2) since Article 8(3) is precisely an exception to Article 8(2).

The Court also notes that the features of a design may fall under both Article 8(1), i.e. functional features, and Article 8(2), i.e. features which must necessarily be reproduced for the connection, insertion or contact of the product with another product.

Finally, the Court adds that Article 8(3) must be invoked for all the features referred to in Article 8(2), including those features which are also solely functional and therefore fall under Article 8(1). It also states that Article 8(3) must also be invoked by the design holder for the features for which Article 8(2) has not been invoked by the applicant for invalidity of the design.  

Indeed, if this were not the case, the owner of the contested design would be deprived of the possibility of invoking Article 8(3) depending on the arguments put forward by the applicant for invalidity.

According to the General Court, the Board of Appeal erred in law when it refused to examine whether this exception was applicable in this case.

The question remains as to how the latter will interpret and eventually apply this very special exception.

(1) Case n° T-515/19 -24 march 2021 Lego v. EUIPO and Delta Sport Handelskontor GmbH.

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