A Puzzling Decision: Freedom on Toy Blocks’ Production Market vs. LEGO’s Protection

We already referred to a case concerning Lego, and, in particular, concerning Lego mini-figures and their possibility to be registered as shape marks (see here).

Now, after filing an application for registration of a Community Design with the European Union Intellectual Property Office (EUIPO) to be applied in Class 21.01 of the Locarno Agreement of 8 October 1968 with the following description: “Building blocks from a toy building set”, Lego A/S (“Lego”) got a big surprise by Delta Sport Handelskontor GmbH (“Delta”) which decided to “raise its concerns”.

Specifically, on December 8, 2016, Delta decided to challenge the validity of Lego’s application on the basis of the fact that all the features of appearance of the product concerned by the contested design were solely dictated by the technical function of the product and, for that reason, were excluded from protection; the claims were mostly grounded on Article 25(1)(b) of Regulation No 6/2002, along with Articles 4 to 9 of that same Regulation.

In the first instance, on October 30, 2017, EUIPO’s Cancellation Division rejected the invalidity claim while, in appeal, the ruling was overturned and the design was invalidated (by decision of the Board of Appeal – April 10, 2019) (texts of both decisions are available here under section “Decisions”).

At this point, Lego decided to bring the case in front of EU’s General Court claiming (i) the annulment of the contested decision and (ii) the upholding of the decision of the Cancellation Division.

The EU’s General Court, on March 24, 2021, annulled the appeal decision, specifying, inter alia, what follows (full text available here):

  • The Board of Appeal failed to assess whether the design met the requirements of the exception provided for in Article 8(3) of Regulation No 6/2002 for which “the mechanical fittings of modular products may nevertheless constitute an important element of the innovative characteristics of modular products and present a major marketing asset, and therefore should be eligible for protection”. Since it failed to do so, it erred in law.
  • In order to assess whether a design product should be invalidated, all the features and/or elements of the same should be dictated by technical function, but if at least one of the features is not imposed exclusively by technical functions, the design cannot be declared invalid. In that regard, the General Court notes that the fact that the LEGO brick has a smooth surface of the upper face of the product is not present among the characteristics identified by the Board of Appeal, even though it is a feature of the appearance of the brick itself; and that
  • with reference to the above, the burden of proof should rely on the applicant of the invalidation query and then be ascertained by EUIPO.

Maria Di Gravio and Francesca Di Lazzaro

General Court (Second Chamber), 24 March 2021, LEGO A/S vs EUIPO, Case T‑515/19

HAPPY EASTER EVERYONE FROM IPlens

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