This victory is also an important new step in the clarification of the quite challenging relationship between technical function and design protection.
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.
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