In brief

EU Regulation on Community Designs excludes protection for designs whose appearance is solely dictated by its technical function and those that permit its interconnection with other products, provided certain requirements are met. The aim of these exclusions is to promote technological innovation and interoperability of designs in the market.

Nevertheless, the recent decision of the General Court of the EU regarding the invalidity of the LEGO brick design (T-515/19), appears to change the landscape by broadening the scope of protection of modular designs.

Contents

  1. In depth
    1. Background
    2. Analysis of the GC on Art. 8 RDC  
    3. General remarks and considerations 

In depth

Background

The case before the General Court ("GC") started with an invalidation action concerning a Community Design No. 001664368-0006, registered by Lego on 11 February 2010. This design is registered in the Locarno Classification 21.01 for "Building blocks from a toy building set" covering the following graphic representations:

Whereas the EUIPO Cancellation Division rejected the invalidity claim of the design in first instance, the EUIPO Board of Appeal ("BoA") declared the design invalid under Art. 8(1) of the Council Regulation (EC) No. 6/2002 of 12 December, on Community Designs ("RDC"), as the appearance of the contested design was dictated solely by its technical function, that is, "to allow assembly with, and disassembly from, the rest of the bricks of the set1"

The BoA decision was appealed by LEGO to the GC. LEGO argued that:

  • Art. 8(3) RDC was applicable to the case at hand: Art. 8(3) RDC grants protection to all designs that allow the interconnection of modular products, so long as they comply with the requirements of Arts. 5 and 6, this is, provided they have novelty and individual character.

In this regard, Art. 8(3) RDC sets out an exception only applicable to those cases falling under Art. 8(2) RDC ("Notwithstanding paragraph 2…") which excludes protection of products of interconnections that must necessarily be reproduced in their exact forms and dimensions or have "must-fit features".

The logic behind Art. 8(2) RDC is to promote interoperability of products in the market. Nevertheless, Art. 8(3) RDC grants protection to modular systems, meaning, those designs which have innovative character regardless of their interconnection function.

  • Art. 8(1) RDC was not pertinent: LEGO argued that the BoA did not take into account all features of appearance of the contested design, in particular, it had not taken into consideration the smooth surface on either side of the row of four studs on the upper side. Art. 8(1) RDC intends to promote technological innovation by prohibiting an exclusive right over a design whose features are dictated solely by a technical function. This provision has already been interpreted by the Court of Justice in the Doceram Case2, where the Court stated that products whose features of appearance only fulfil a particular technical function and where the visual aspect of the design has not played any relevant role, the design cannot not be protected.

Analysis of the GC on Art. 8 RDC

The GC confirmed LEGO's arguments and stated that:

  • The BoA erred in assessing all elements concerned in the controverted design, in particular, the smooth surface of the LEGO building block, and therefore could not assert that all aspects of appearance of the products were dictated by a technical function. Therefore applicability of art. 8.(1) RDC had to be reexamined.
  • Additionally, the GC found that, in light of the factual findings of the BoA concerning the purpose of the controverted product, Art. 8(2) RDC had to be examined (notwithstanding said legal argument had not been brought by the cancellation applicant) as the appearance of the LEGO building block has a relevant role in its interconnecting nature. By doing so, the GC asserts that there can be an overlap between provisions 8(1) and 8(2) RDC where, as it happens in the present case: (i) the technical function of the concerned design could be the only factor that determines its appearance; and (ii) this design permits the interconnection of the product embodying the design with another product.
  • Finally, the GC stated that in such overlapping cases the exception of Art. 8(3) has to be examined as protection of designs that serve the purpose of a modular system can be protected under the provisions of the RDC.

In conclusion, the BoA Decision No. R 31/2018-3 had to be annulled.

General remarks and considerations

The GC Lego Case has indeed broaden the scope of protection of Art. 8 RDC by stating that although there may be designs that fall under the exceptions provided in Arts. 8(1) and 8(2) RDC, such designs - "Modular designs" - can enjoy protection under the RDC, insofar as they comply with Arts. 5 (novelty) and 6 (individual character), as otherwise, the innovative aspect of the same would be left out to competitors in the market.