LEGO’s iconic building blocks were ruled ineligible for registered design protection in 2019. A decision by the EUIPO Board of Appeal found that the design of the block was solely dictated by its technical function, but a recent appeal has overturned this decision.
Here, we look at the issues raised in this case, which has seen those who rely on these valuable IP rights breath a collective sigh of relief…
THE TECHNICALITIES OF DESIGN RIGHTS
Although a Registered Community Design (RCD) is a way of protecting the appearance of the whole or part of a product, a first exception to this are design features that are solely dictated by their technical function – the details of which are set out in Article 8(1) of the Council Regulation No 6/2002 on Community Designs (CDR).
A second exception set out in Article 8(2) CDR, and known as the “must-fit” exclusion, relates to features, which must necessarily be reproduced in their exact form and dimensions in order to permit a product to be mechanically connected to or placed in, around or against another product so that either product may perform its function.
In this case regarding LEGO’s building block (registered under Community Design number 1664368-0006), the General Court of the CJEU considered whether a toy building block could have any aesthetic features that are not excluded under Article 8 CDR, particularly Article 8(1) CDR.
In the contested decision (R31/2018-3), the Boards of Appeal of the EUIPO were of the opinion that the RCD consisted of a total of six features of appearance, all of which were solely dictated by their technical function.
FORM OR FUNCTION?
During the CJEU’s review, a key point of contention was whether even a smooth surface of the building block could be considered as a non-technical, aesthetic feature of appearance that would entitle the building block in question to Community Design protection. The defendant (EUIPO) and intervener (Delta Sport Handleskontor GmbH) were of the opinion that a smooth surface “allows two bricks to be twisted when connected by a single stud at the end of a row [of studs]” and was, thus, no more than a feature of the bricks’ appearance that is dictated by the technical requirement for twisting bricks with respect to each other.
The General Court rejected the EUIPO’s arguments and found that the smooth surface of the building block is more than just a feature dictated by the building block’s technical function. Rather, the CJEU found that even the smooth surface on the upper side of the building block (Figure 1 of the RCD) is a feature of its appearance and not just a mere consequence of the “absence of studs on the upper surface of the brick”.
The CJEU based their judgement largely on existing case law in DOCERAM (C395/16, EU:C:2018:172), according to which “it must be examined whether the need to fulfil that technical function is the only factor that determined the choice by the designer of those features, with considerations of another nature, in particular those related to the visual aspect of that product, having played no role in the choice of those features”.
BURDEN OF PROOF
The General Court also clarified that the burden of proof is not on the design owner to demonstrate that their design includes features that are not solely dictated by their technical function. Rather, it was for the party contesting the design to provide evidence that none of the aspects of a registered design are based on considerations related to visual aspects.
SUMMARY
This decision confirms a long-standing registered design practice in Europe, namely that Community Designs are indeed available even for highly technical products. In this case, even a flat, smooth surface of a largely functional item was considered to be a visual aspect not solely dictated by technical function.
In practice this means that Article 8(1) CDR is not likely going to be an easy way to invalidate an entire design, as virtually any engineering product should include at least some non-technical aspects that generally overcome the technicality exclusions in Europe.
It is still a requirement that at least the non-technical aspects of a design need to have ‘individual character’, i.e. produce an overall different impression compared to prior designs, in order to obtain valid design protection. Therefore, if the only non-technical aspect of a product design is a smooth surface, it may not clear the ‘individual character’ hurdle.
WHAT DOES IT MEAN?
This ruling is a major victory for The Lego Group and provides reassurance for many thousands of manufacturers who rely on design protection for technical products. Such rights will continue to provide a viable, additional layer of IP protection for technical products, in addition to more traditional registered rights favoured by engineering businesses, such as patent protection.
