EU General Court dismisses action for invalidity of Lego brick design

In its judgment of 24 January 2024 in Case T-537/22, the General Court of the European Union dismissed the action brought by Delta Sport Handelskontor, rejecting its application for a declaration of invalidity of the Community design relating to the LEGO brick shown below.

We have already discussed the issue here on this blog, in which we refer to a summary of the earlier proceedings. Basically, it concerns the interpretation of Article 8 of EU Regulation 6/2002, which states that a Community design:

1) does not confer rights to features of appearance of a product determined solely by its technical function;

2) does not confer rights in respect of those features of appearance of a product which must necessarily be reproduced in order for the product to be mechanically connected to another product;

3) notwithstanding paragraph (2), confer rights on the characteristics of appearance which are intended to allow the connection of interchangeable products within a modular system.

In summary, in 2010 Lego A/S had filed an application to register the design of the brick in question, which was opposed by Delta Sport. The registration had been declared invalid by the EUIPO Board of Appeal due to the limits imposed by Article 8(1) of EU Regulation No. 6/2002, as it had been considered that any characteristic of the appearance of the product was imposed exclusively by the technical function of the product. However, by judgment in Case T-515/19, the EU General Court had annulled the earlier decision of the Board of Appeal of the EUIPO. The case was then referred back to the Board of Appeal, which dismissed the appeal against the design registration. Hence Delta Sport's further appeal, which gave rise to the judgment under comment.

In the judgment, rejecting Delta Sport's corresponding grounds of appeal, the Court confirmed first of all that a design could only be declared invalid if all of its features are excluded from protection under Article 8; consequently, it is considered to be sufficient that at least one of its features is protected to establish its validity.

In the present case, the appellant argued that one of the seven characteristics (the smooth surface) of the contested product could not benefit from the exception in Article 8(3). However, the Court noted, according to the above reasoning, the application of the exception of Article 8(3) would in any case only be affected  for that single characteristic, remaining applicable to the other six. Hence, the model could not be declared invalid on that ground.

In rejecting the second ground of appeal, the Court ruled instead on the apportionment of the burden of proof. In particular, the Court considered that the applicant for a declaration of invalidity had not provided evidence to show that the contested design did not fulfill the conditions of Articles 5 (novelty) and 6 (individual character). Therefore, the owner of that design was not even required to produce counter-arguments and evidence showing why that design should not be declared invalid. The Board of Appeal, in turn, was not required to assess the novelty and individual character of the design.

In its third ground of appeal, the appellant complained that the Board had infringed Article 63(1), according to which, in proceedings for a declaration of invalidity, the Office's examination shall be limited to the facts, evidence and arguments submitted by the parties and the claims made by them.

In this case, the General Court agreed with the arguments of the Board of Appeal, which held that the evidence provided by the appellant (links to a website and a reference to a CJEU judgment on the Lego brick, but without any additional explanation) was not sufficient to prove disclosure of the earlier design before the filing date of the application for registration.

In this respect, the General Court pointed out that the disclosure of an earlier design does not, in itself, constitute a well-known fact that does not need to be proved, even if the products in which that design is incorporated or to which it is applied have been on the market for a long time and are generally known to the public. Indeed, the Office must have an image of the prior design that precisely identifies it, and evidence must also show that the prior design was actually disclosed to the public before the date of filing the application for registration of the contested design. Even the mere non-contestation by the applicant is not sufficient to prove the disclosure of a prior design.

On the basis of these arguments, the Court therefore dismissed the application.