May 11, 2021
In February 2010, Lego A/S registered the following Community design in Class 21.01 with the description: “building blocks from a toy building set”:
In December 2016, Delta Sport Handelskontor GmbH, applied to EUIPO for a declaration of invalidity of Lego’s design claiming that all the features of appearance of the product resulting from the design were solely dictated by its technical function and that the design was therefore invalid under Article 8(1) of the Community Design Regulation (6/2002/EC).
EUIPO’s Cancellation Division rejected the application and Delta Sport appealed. The Third Board of Appeal upheld the appeal and declared the design invalid. The BoA found that all the features of appearance of the product resulting from 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.
Lego appealed to the General Court.
Lego argued that its design fell within the exception under Article 8(3), which provides that a design subsists if it serves the purpose of “allowing the multiple assembly or connection of mutually interchangeable products within a modular system”. However, the BoA had not considered Article 8(3). Lego argued that this was a mistake as, although it had not pleaded Article 8(3), the Cancellation Division had suggested that the design fell within its provisions and Lego had cited the Cancellation Division’s findings in its observations before the BoA.
The GC held that no provision of the Regulation precluded the benefit of the exception in Article 8(3) from being relied on, for the first time, before the BoA in response to the decision of the Cancellation Division or to the statement of grounds of appeal. Because of the appeal against the Cancellation Division’s decision, the BoA had jurisdiction to carry out a full examination of the merits of Delta Sport’s application. Therefore, it had jurisdiction to consider Article 8(3) and it could not be deprived of that jurisdiction merely because Lego had chosen to claim the benefit of Article 8(3) for the first time at that stage in proceedings.
The BoA had identified a number of features of appearance of the product and found that they were all solely dictated by the technical function of the building brick, i.e. to allow assembly with, and disassembly from, the rest of the bricks in the set. Accordingly, the features necessarily fell within Article 8(1).
However, the GC said, in order to fulfil the function of assembly and disassembly, the features of appearance of the design, as identified by the BoA, had to be reproduced “in their exact form and dimensions” in order to permit their connection. Therefore, they also fell within Article 8(2).
Consequently, the GC said, features of appearance of a product can fall within both Article 8(1) and Article 8(2), since they might be both solely dictated by the technical function of the product, i.e. to allow connection and disconnection, and constitute “features of interconnection”, i.e. features that allow the product to be mechanically connected to or placed in, around or against another product so that either product can perform its function.
However, the GC said, all “features of interconnection” for the purposes of Article 8(2) are not necessarily solely dictated by the technical function of the product for the purposes of Article 8(1), since interconnection may not be the only factor that determines their appearance. Features of interconnection for the purposes of Article 8(2) can be designed such that visual considerations also play a role, meaning that those features cannot fall within Article 8(1).
The GC held that when examining an application for a declaration of invalidity based on Article 8(1), where EUIPO finds that the features of appearance fall within both Article 8(1) and Article 8(2), and where the proprietor of the contested design relies on the benefit of Article 8(3), it must examine whether those features are capable of benefiting from the protection of modular systems for the purposes of Article 8(3), including when the applicant for a declaration of invalidity does not specifically rely on Article 8(2).
Therefore, the GC held that the BoA should have assessed whether the contested design met the requirements of Article 8(3). Since it had failed to do so it erred in law. Therefore, the GC said that the contested decision should be annulled.
The GC noted that, according to case law, if at least one of the features of appearance of the product resulting from a contested design is not solely dictated by the technical function of that product, the design cannot be declared invalid under Article 8(1).
The GC said that, first, the technical function of the product in question must be considered, and then the features of appearance of that product within the meaning of Article 8(1) should be analysed. After that, whether those features are solely dictated by technical function must be examined in the light of all the relevant objective circumstances. In other words, the question is whether the need to fulfil that technical function is the only factor that determines the choice of the designer or whether other considerations, in particular visual aspects of the product, play a role.
Lego said that that the BoA had misinterpreted the features of its design and had disregarded its creative aspects, referring in particular to the smooth surface on either side of the row of four studs on the upper side, which the BoA did not consider at all.
The GC held that the smooth surface of the upper face of the toy brick was a feature of the specific appearance of the product resulting from the design and was not limited to a mere “absence of studs on the upper surface of the brick”, as EUIPO argued. It followed that the BoA should have taken it into account. Further, it was irrelevant that Lego had not expressly relied on it before the BoA, as it had invoked it before the Cancellation Division.
The GC also rejected the argument that the absence of studs necessarily resulting in a smooth surface was, in fact, technical in character. The BoA had not made any finding that the smooth sides had a solely technical function that allowed certain structures, such as bends or steps, to be built that would otherwise not be possible if the surface was studded. Given that all the features of the appearance of a product must be solely technical for that design to be declared invalid under Article 8(1) and the BoA had not even referred to a particular feature, let alone found it solely technical, the BoA had infringed Article 8(1).
The GC therefore annulled the BoA’s decision. It declined to uphold the Cancellation Division’s decision, as the GC does not have the power to carry out an assessment on which the BoA has not yet adopted a position (in this case, the technical function (or not) of the smooth side of the Lego brick design). (Case T-515/19 Lego A/S v EUIPO EU:T:2021:155 (24 March 2021) — to read the judgment in full, click here).