Lego brick still protected as a design patent

The ECJ has ruled that the EUIPO wrongly invalidated a design patent for a LEGO toy building block.

Lego is the owner of a design registered on February 2, 2010 for “building blocks of a toy construction set.”

In proceedings on an application for invalidity filed by Delta Sport Handelskontor, the EUIPO Board of Appeal, in a decision dated April 10, 2019, held that all the appearance features of the product covered by the contested design were exclusively due to its technical function, namely to allow assembly with other building blocks of the game and disassembly.

The EUIPO therefore declared the design in question invalid under the provisions of the Community Design Regulation.

As a result, Lego brought an action to annul this decision.

The Board of Appeal identified the following appearance characteristics of the product:

first, the row of dimples on the top of the brick; second, the row of smaller circles on the bottom of the brick; third, the two rows of larger circles on the bottom of the brick; fourth, the rectangular shape of the brick; fifth, the thickness of the walls of the brick; and sixth, the cylindrical shape of the dimples.

All these features are exclusively conditioned by the technical function of the brick, namely to allow assembly with other bricks of the game and disassembly.

In its recent judgment, the ECJ points out that a design
under the Regulation does not consist of features of appearance of a product which
must necessarily be reproduced in their exact form and dimensions
so that the product in which the design is incorporated or to which it is applied can be mechanically connected to or placed in, on or around another product so that both products can perform their function.

Exceptionally, however, the mechanical fasteners of combination parts may constitute an important element of the innovative features of combination parts and may be a significant factor in marketing and should therefore be eligible for protection. A Community design thus subsists in a design which serves the purpose of enabling the assembly or connection of a plurality of interchangeable products within a modular system.

The ECJ therefore finds that the Board of Appeal did not examine whether the exception relied on by Lego for the first time before it was applicable. The EU Court of Justice therefore first had to clarify whether the Board of Appeal of EUIPO had to examine the conditions of application of this exception and thus assess whether it could be invoked for the first time before it.

Since neither the Community Design Regulation nor the
Rules of Procedure of the Boards of Appeal of the EUIPO lay down the conditions for the application of the provisions relating to the exception in question, the Court held that it cannot be held that Lego’s first invocation of that provision before the Board of Appeal was out of time.

The General Court adds that the Board of Appeal of EUIPO had to examine whether the product covered by the contested design met the conditions for the derogation in question in the light of the
appearance characteristics of the product. Since it failed to do so, it erred in law.

The Court then states that a design must be declared invalid if all the features of its appearance are exclusively conditioned by the technical function of the product to which it relates, but that the design in question cannot be declared invalid if at least one of the features of appearance of the product covered by a contested design is not exclusively conditioned by the technical function of the product. However, the brick in question has a smooth surface on two sides of the four-nobled row on the upper side, and this feature, as the Court finds, is not one of the features identified by the Board of Appeal, although it is an appearance feature of the product.

The CJEU adds that it is for the applicant in the invalidity proceedings to prove
and for the EUIPO to establish that all the features of appearance of the
product covered by the contested design are exclusively due to
the technical function of that product. It concludes that
the Board of Appeal infringed the provisions of the Regulation on
Community designs by failing to identify all the features of appearance
of the product covered by the contested design and, a fortiori, by failing to establish
that all those features were exclusively due to the technical
function of that product.

Author: Marian Härtel

Marian Härtel ist Rechtsanwalt und Fachanwalt für IT-Recht mit einer über 25-jährigen Erfahrung als Unternehmer und Berater in den Bereichen Games, E-Sport, Blockchain, SaaS und Künstliche Intelligenz. Seine Beratungsschwerpunkte umfassen neben dem IT-Recht insbesondere das Urheberrecht, Medienrecht sowie Wettbewerbsrecht. Er betreut schwerpunktmäßig Start-ups, Agenturen und Influencer, die er in strategischen Fragen, komplexen Vertragsangelegenheiten sowie bei Investitionsprojekten begleitet. Dabei zeichnet sich seine Beratung durch einen interdisziplinären Ansatz aus, der juristische Expertise und langjährige unternehmerische Erfahrung miteinander verbindet. Ziel seiner Tätigkeit ist stets, Mandanten praxisorientierte Lösungen anzubieten und rechtlich fundierte Unterstützung bei der Umsetzung innovativer Geschäftsmodelle zu gewährleisten.