Marta González Aleixandre, Associate Intellectual Property Department
European Justice has found in favor of LEGO in its General Court Judgment (GC) of March 24, 2021 in case T-515/19, recognizing the validity of a design consisting of the representation of a block which is a component of this well-known construction game. The decision focuses on defining the endlessly vague delineation between esthetic and functional, and merely esthetic aspects of the industrial design, a far from easy task and one on which the very existence of the right depends.
It is not the first time that the Danish company has had to defend the validity of its exclusive rights before the European courts regarding the shape or appearance of some of its bricks. Particularly well known are the judgments relating to valid registration as a trademark of three dimensional forms of different articles (see here, here and here).
The judgment in question ruled on an application for a declaration of invalidity filed against the Community design owned by Lego filed on February 2, 2010 and registered for “building blocks for a toy building set”.
The importance of this ruling lies in the GC’s analysis of invalidity requirements in the case of a design wherein the essential features are marked by an eminently technical function, as well as the exceptions that may be applicable in such cases.
It is important to highlight that the process of registering a community design does not entail any examination of prior validity, with the Office confining itself to verifying a number of formal questions. It is only subsequently, when the design has been registered, that its validity may be challenged by filing an application for a declaration of invalidity at the European Intellectual Property Office (EUIPO), based on some of the grounds assessed and contained in the Regulation on Community Designs.
In accordance with this procedure, on December 8, 2016, the German toy company Delta Sport Handelskontor, filed an application for a declaration of invalidity at the EUIPO in respect of the aforementioned LEGO registration, alleging that all the features of appearance of the product concerned by the contested design were solely dictated by the technical function of the product.
In this case, the Appeals Chamber of the EUIPO upheld the invalidity, having identified different features of the appearance of the product, considering that they were solely dictated by the technical function of the building brick, namely to allow assembly with, and disassembly from, the rest of the bricks in the set.
In the light of this consideration, LEGO argued before the Appeals Board that the exception contained in article 8.3 of the Regulation was applicable, according to which the validity is recognized of designs serving the purpose of allowing the multiple assembly or connection of mutually interchangeable products within a modular system, considering that mechanical adjustments of this type of product can constitute an important element of their innovative features, and a fundamental advantage for their commercialization.
In relation to this exception, the Court had to determine, firstly, as this was a modular system, whether it was pertinent to apply said exception. Secondly, it had to analyze whether the invocation of that exception for the first time before the Appeals Board had been validly formulated or conversely, should be deemed inadmissible having been submitted belatedly.
The Judgment concluded that none of the regulations applicable to the case would prevent the aforementioned exception from being invoked for the first time before the Appeals Board. It therefore held that the EUIPO had erred under law since it had failed to assess whether the conditions for application of said exception were met.
Regarding the examination of the design’s validity on the grounds formulated, the GC established an analysis in three phases:
- (i) to determine the technical function of the product;
- (ii) to identify all the features of the product’s appearance;
- (iii) to confirm whether said features were exclusively imposed by the technical function of the product in question.
Having established the foregoing, the Court held that the Appeals Board had failed to adequately identify all the features of the product’s appearance, given that a necessary condition for a declaration of invalidity of the design was that said appearance had been dictated exclusively by the technical function.
Specifically, the Court stated that the block in question presented a feature (“the smooth surface on either side of the row of four studs on the upper side”) which was disregarded by the Appeals Board in its decision, and which should have been taken into account.
The Judgment therefore considered that the EUIPO infringed the terms of the Regulation, since it failed to exhaustively identify all the features of appearance that make up the product. Indeed, the Court held that although it was the task of the party claiming invalidity to attest to this point, it was the EUIPO’s obligation to confirm that effectively, the technical function is the sole determining factor of these features.
This is a considerable step forward in terms of assessing the validity of industrial designs with a high functional component, and it will assist in dispelling the “urban myth” that functional designs are not suitable for protection through an industrial design. Yes, in fact they can be protected in this way, however, they need to be subjected to a particularly thorough analysis beforehand, in order to avoid allocating resources to the registration of designs that can be easily invalidated.
 Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs
Marta González Aleixandre
Garrigues Intellectual Property Department