In March, the General Court of the European Union ruled on the validity of the community design granted to Lego on its famous toy blocks in February 2010 (case T-515/19, Lego A/S v. EUIPO). In its ruling, the GC interpreted article 8 of the Community Design Regulation (CDR) and applied the Court’s established position on industrial designs dictated by their technical function, a particularly important issue for designs with functional elements.
Background
In 2016, Delta requested that Lego’s community design no. 1664368-0006 on “Construction elements pertaining to a building game” be declared invalid. Delta claimed that the design was excluded from protection by article 8(1) of the CDR:
“1. A Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function.”
At first instance, the EUIPO dismissed Delta’s invalidity request and confirmed the validity of the disputed community design. However, on appeal, the EUIPO ruled Lego’s community design invalid. Lego appealed this ruling claiming infringement of articles 8(1) and 8(3) of the CDR.
The General Court’s (GC) Decision
- Regarding article 8(1) of the CDR
The GC took the CJEU‘s judgment of March 8, 2018 in case C-395/16, DOCERAM v. CeramTec, already discussed in this blog, as a basis. It determined that, for a community design to be invalid based on Article 8(1) of the CDR, all the product’s features of appearance must be solely dictated by its technical function. If at least one of the features does not meet this requirement, it could not be invalid based on this Article.
Also, under article 8(1), recital 10 of the CDR and the precedent set by CJEU’s judgment in case C-395/16, to determine whether a community design must be excluded from protection under that article, it is necessary to: (a) determine the technical function of the product in question; (b) analyze the product’s features of appearance; and (c) examine whether, in accordance with the relevant objective circumstances, those features are solely dictated by the product’s identified technical function.
- For the EUIPO, the technical function of the protected blocks is the capacity to be put together, with sufficient stability, with other blocks to create toy constructions. Taking this scheme into account, it concluded that all the identified features of appearance of the blocks had been solely configured by that technical function and are excluded from protection.
- Lego argued that not all the product’s features of appearance were taken into account, as the flat surface on the upper part of the blocks was not included in the features examined.
The GC sided with Lego and ruled that the EUIPO should have examined the blocks’ flat surface, as a feature of the product’s appearance, to decide whether the requirements of Article 8(1) of the CDR were met or not. The GC also established that the burden of proving that that feature was not solely dictated by the product’s technical function lay with the party claiming invalidity (Delta).
Therefore, given that all the elements of the products were not analyzed, the GC ruled that the EUIPO could not correctly conclude that all the protected blocks’ features of appearance were solely dictated by its technical function.
- Regarding article 8(3) of the CDR
Lego also claimed that the EUIPO did not take into account the exception envisaged in article 8(3) of the CDR.
Lego stated that its building blocks constitute a modular system that can be protected. However, the EUIPO dismissed this argument because article 8(3) is an exception to article 8(2) of the CDR, and Delta based its invalidity claim on article 8(1); and because it is not possible to claim the exception for the first time before the EUIPO Board of Appeal.
The GC again sided with Lego on this point and concluded that the EUIPO should have analyzed the applicability of article 8(3) of the CDR.
The GC also took the opportunity to clarify the relationship between the different precepts of article 8 of the CDR:
- Contrary to Lego’s argument, the GC confirmed that article 8(3) of the CDR is an exception to article 8(2) and not to article 8(1) of the CDR.
Authors: Raúl Pérez Terol y Ainhoa Rey Cendon