EUIPO erroneously declared invalid Lego’s EU design of a brick

With a decision of last 24 March, case T-515/19, the EU General Court annulled the decision by which the EUIPO Board of Appeal had found invalid Lego’s EU design of a brick reproduced below, registered in 2010 by Lego A/S in class 21.01 of the Locarno Convention (“building blocks of a toy building”).

In 2016, in fact, Delta Sport Handelskontor GmbH had challenged the validity of the EU model before the Cancellation Division of the EUIPO, claiming that all the features of appearance of the product concerned by the contested design were solely dictated by the technical function of the product (i.e. assembly with, and disassembly from, other bricks) and, for that reason, were excluded from protection pursuant to Article 8(1) of EU Reg. No. 6/2002: “A Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function“.

The EUIPO Board of Appeal had later granted the application for the declaration of invalidity, initially dismissed by the EUIPO Cancelation Division. On that occasion, Lego A/S had claimed the validity of its model stating that its disputed features of appearance, although dictated by the technical function of the product, enjoyed protection pursuant to Article 8(3) of the aforementioned Regulation, according to which a community design or model confers rights on designs/models aimed at “allowing the multiple assembly or connection of mutually interchangeable products within a modular system”; in particular, Lego noted that this rule constituted an exception to the abovementioned Article 8(1). This perspective, however, was not accepted by the EUIPO, which had found that all the features of appearance of the product were solely dictated by its technical function, namely allowing assembly and disassembly with other products of the same type, and had therefore ascertained the invalidity of the model pursuant to Article 8(1). More specifically, the EUIPO had individuated the following features of appearance: the row of studs on the upper face of the brick; the row of smaller circles on the lower face of the brick; the two rows of bigger circles on the lower face of the brick; the rectangular shape of the brick; the thickness of the walls of the brick; and the cylindrical shape of the studs.

This decision had been appealed by Lego A/S before the EU General Court, where the company had reiterated that this case fell within the exception referred to in Article 8(3) of the Regulation and that the EUIPO had not given due consideration to this rule. On the other hand, the EUIPO and Delta Sport had argued that the exception could not apply to the present case and that, in any event, the Board of Appeal could not have taken it into account for procedural reasons, since invoked by Lego A/S for the first time on appeal.

In this regard, the EU General Court first stated that, from a procedural point of view, no European legislation explicitly provides for limitations to the objection of Article 8(3); therefore, the objection should not have been deemed late and, in failing to assess its applicability to the present case, the Board of Appeal was in breach of law.

As per the actual applicability of the rule to the present case, the EUIPO and Delta Sport had claimed that the text of Article 8(3) expressly states that it constitutes an exception to Article 8(2), which excludes from the protection provided for Community designs those characteristics that must necessarily be reproduced in their exact form and dimensions to allow the product to be mechanically connected to or placed in, around or against another product, so that either product may perform its function. However, given that the characteristics of the Lego product did not fall within the category of interconnection characteristics referred to in Article 8(2), but in that of functional characteristics referred to in Article 8(1), the exception invoked by Lego A/S could not apply.

Such an interpretation was rejected by the EU General Court, which, in this decision, found that a product’s characteristics may fall within the scope of paragraphs 1 and 2 of Article 8 at the same time, if they are dictated exclusively by the function of the product and simultaneously allowed to interconnect with other elements. In such cases, according to the Judge, if it were deemed that Article 8(3) constitutes an exception to paragraph 2 and it cannot be applied to the characteristics that fall within the scope of paragraph 1, the modular systems protection would be ineffective: in fact, an application for the declaration of invalidity might on purpose rely on paragraph 1 of Article 8 only, in order to preclude the application of the exception referred to in paragraph 3. Therefore, in order to preserve the effectiveness of Article 8(3) of the Regulation, the Court concluded that, when the EUIPO, when examining an application for a declaration of invalidity based on Article 8(1), finds that the features of appearance of the product concerned by the contested design fall within both Article 8(1) and Article 8(2) of that regulation, and where the proprietor of the contested design relies on the benefits of Article 8(3) of that regulation, it must examine whether those features are capable of benefiting from the protection of modular systems for the purposes of that latter provision, including when the applicant seeking a declaration of invalidity did not rely on Article 8(2) of that regulation.

On the merits, however, the EU General Court did not verify whether or not Article 8(2) covered the characteristics of the product and, therefore, if they fell within the exception of Article 8(3), since it held that, in essence, the conditions of applicability of Article 8(1) were not met. In fact, the EU General Court recalled that: i) a Community model must be declared invalid if all its features of appearance are imposed exclusively by the technical function of the product concerned, so that, even if only one of them is not exclusively dictated by the technical function of the product, the model cannot be declared invalid; and ii) it is for the applicant seeking a declaration of invalidity to demonstrate and for the EUIPO to find that all the features of appearance of the product concerned by the contested design are solely dictated by its technical function. In light of this, since the EUIPO had failed to assess that the brick’s features included a smooth surface on either side of the row of four studs on the upper side, it had infringed Article 8(1) of the Regulation, in that it had not identified all the features of appearance of the product concerned by the contested design and, a fortiori, it had not ascertained that all of those features were solely dictated by the technical function of that product.

In conclusion, the Court therefore annulled the decision of the EUIPO, and referred the dispute to the same for any further assessment on the merits.