Invalidity Decision Against Lego’s Building Blocks Held to Not Stack Up

In Lego AS v EUIPO T-515/19 the General Court upheld Lego’s appeal, finding that the EUIPO Boards of Appeal erred in considering whether Lego’s design application relating to a toy building block is invalid.

In February 2010 Lego applied for and obtained registration for a toy building block. For the design in question the top side consists of four cylindrical protrusions evenly spaced along the centre line of the longest axis of an otherwise flat rectangular block. The bottom side has larger cylindrical protrusions centred either side of the space between each pair of indents corresponding to the top side protrusions. The blocks are designed to be capable of assembly with each other to create reasonably stable structures as well as being capable of disassembly.

In December 2016 Delta Sport Handelskontor GmbH filed an application for a declaration of invalidity on the basis that all the features of appearance of the building blocks are solely dictated by their technical function. In October 2017 the EUIPO’s cancellation division rejected the invalidity application on the basis that Delta Sport had failed to show that the interconnectability function was the only factor that determined the features of appearance for the blocks. In April 2019 an EUIPO Board of Appeal upheld Delta Sport’s appeal finding the design to be invalid on account of all the features of appearance of the blocks being dictated by the functions of mutual assembly with sufficient stability and being relatively easy to disassemble.

Article 8 of the EU Designs Regulations 2002-6 has three provisions. Article 8(1) excludes from design protection features of appearance of a product that are solely dictated by its technical function. Article 8(2) excludes from design protection features of appearance of a product that must necessarily be reproduced in order for the product to be mechanically connected to or placed in, around or against another product so that either product may perform its function. Article 8(3) provides an exception to Article 8(2) where the design serves the purpose of multiple assembly or connection of mutually interchangeable products within a modular system. Before the EUIPO Boards of Appeal Lego argued that its building blocks fall within the Article 8(3) exception, but the Boards of Appeal did not address that in its opinion as Delta Sport had only pleaded invalidity in respect of Article 8(1).

On appeal the General Court had to consider whether the EUIPO Boards of Appeal should have assessed the conditions for the application of Article 8(3). EUIPO argued that Article 8(3) was not available to Lego as they only raised it for the first time before the EUIPO Boards of Appeal. However, the General Court agreed with Lego that Article 8(3) did not fall within the applicable and very specific rules of procedure for claims or requests that must be raised in due time in order to be appealable, finding that the EUIPO Boards of Appeal had jurisdiction to consider the merits of Article 8(3).

The General Court noted that features of appearance of a product may fall within both Articles 8(1) and 8(2) since they may both be solely dictated by the technical function of that product, namely to allow the connection and disconnection of that product, and constitute features of interconnection. Although, all features of interconnection for Article 8(2) purposes are not necessarily solely dictated by the technical function of the product for Article 8(1) purposes, since the interconnection of that product may not be the only factor determining the appearance of those features. Consequently, Article 8(2) covers a broader category of features of interconnection than Article 8(1).

The General Court held that where a feature of appearance falls within both Articles 8(1) and 8(2) it must be possible to apply both those provisions even if only Article 8(1) is pled by the applicant for a declaration of invalidity. Further, reliance on Article 8(3) must be possible for all the features referred to in Article 8(2), including those that overlap with Article 8(1). The application of Article 8(3) is independent of the intention of the applicant for invalidity and must be considered where a feature of appearance falls within both Articles 8(1) and 8(2). Given the overlap of those provisions for the design in question, the General Court held that the EUIPO Boards of Appeal erred by not considering Article 8(3).

Lego also appealed the EUIPO Board of Appeals finding under Article 8(1) that all features of appearance of the building block are solely dictated by its technical function. Lego claimed that the Boards of Appeal failed to consider whether the smooth surface on the top side either side of the protrusions is a creative feature. At the appeal hearing the Boards of Appeal argued the smooth surface to be a technical feature as the absence of protrusions in those areas allowed for a greater range of connections.

The General Court noted that if at least one feature of appearance of a product is not solely dictated by function, then Article 8(1) is not applicable as that provision requires no freedom for the presence of arbitrary features. The General Court found the smooth surface to be a specific feature of appearance and not the mere absence of protrusions and that the onus was on the applicant for the declaration of invalidity to show that it was solely dictated by technical function. By not identifying all the features of appearance for the design in the contested decision the Boards of Appeal was held to have failed to establish that all features of appearance of the design are dictated by the technical function of the building block.

Author: Quinn Miller

//piperpat.com/news/article/invalidity-decision-against-legos-building-blocks-held-to-not-stack-up