Design vs Function: A Case Study of the Lego Brick Ruling
The European Court of Justice—The General Court (Second Chamber)
Case No.: Case T-515/19 (2021)
Parties to the Case
| Party | Details |
|---|---|
| Applicant | Lego A/S, Represented by V. von Bomhard and J. Fuhrmann |
| Respondent | European Union Intellectual Property Office (EUIPO), represented by S. Hanne |
Facts of the Case
- On 2 February 2010, the applicant, Lego A/S, filed an application for registration of a community design with the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No. 6/2002 of 12 December 2001 on community designs (OJ 2002 L 3, p. 1).
- On 8 December 2016, the intervener, Delta Sport Handelskontor GmbH, filed an application for a declaration of invalidity of the contested design pursuant to Article 52 of Regulation No. 6/2002.
- In particular, the intervener claimed 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 pursuant to Article 8(1) of that regulation (A community design shall not subsist in features of appearance of a product that are solely dictated by its technical function).
- On 30 October 2017, EUIPO’s Cancellation Division rejected the application for a declaration of invalidity.
- On 5 January 2018, the intervener filed a notice of appeal with the EUIPO, pursuant to Articles 55 to 60 of Regulation No. 6/2002, against the decision of the Cancellation Division.
- By decision of 10 April 2019 (‘the contested decision’), the Third Board of Appeal of EUIPO upheld the appeal and annulled the decision of the Cancellation Division and declared the contested design invalid, as all the features of appearance of the product concerned by the contested design were solely dictated by the technical function of the product, namely to allow assembly with and disassembly from the rest of the bricks of the set.
Issues Raised
- Is the decision of the Third Board of Appeal valid or not?
- Is the decision of the Cancellation Division valid or not?
Contention
The applicant claims that the contested design falls within the exception referred to in Article 8(3) of Regulation No. 6/2002 (Article 5 – novelty, Article 6 – individual character) and it could therefore not be declared invalid in the present case. Further, it was contended that the smooth surface of the upper face of the product concerned by the contested design is not included among the features identified by the Board of Appeal, which is not a technical function of the product.
EUIPO rejects the applicant’s arguments and contends, primarily, that Article 8(3) of Regulation No. 6/2002 was inapplicable to the present case. Further, as to the smooth surface of the product, the EUIPO argued that the absence of a stud is also a technical function.
Decision: The Board of Appeal identified the following features of the appearance of the product:
- the row of studs on the upper face of the brick;
- the row of smaller circles on the lower face of the brick;
- the two rows of bigger circles on the lower face of the brick;
- the rectangular shape of the brick;
- the thickness of the walls of the brick and,
- the cylindrical shape of the studs.
Legal Framework Under Article 8
Article 8 (1) and article 8 (2) of the regulation invalidate a design if all the features of its appearance are solely dictated by the technical function of the product.
However, in this case the applicant contended that the brick design falls under the exception laid down under article 8(3), which says if a community design fulfills the conditions under article 5 – Novelty and article 6 – Individual Character, then it is an exclusion to article 8(1) and article 8(2).
Key Legal Provisions
| Article | Provision |
|---|---|
| Article 5 | Novelty |
| Article 6 | Individual Character |
| Article 8(1) & 8(2) | Invalidity if dictated solely by technical function |
| Article 8(3) | Exception if novelty and individual character satisfied |
Arguments By The Applicant
Further, it was contended by the applicant that the list of features of the product concerned by the contested design, drawn up in the contested decision, was incomplete.
They contended that in its observations before the Board of Appeal, the applicant (EUIPO) had reiterated the Cancellation Division’s list of features without endorsing it.
As for the account taken of the smooth surface on the upper side of the brick, EUIPO argued that the absence of studs is also a technical feature.
In particular, it states that the lack of additional studs on the upper side of the brick allows two bricks to be twisted when connected by a single stud at the end of the row, thereby allowing a bend to be built.
Since there are no side studs, steps can also be built that are not obstructed by the studs.
Court Interpretation
The Court of Justice stated that, in order to determine whether the features of appearance of a product are solely dictated by its technical function, it must be established that that technical function is the only factor that determined those features, the existence of alternative designs not being decisive in that regard.
The court held that a design must be declared invalid if all the features of its appearance are solely dictated by the technical function of the product concerned by that design.
It follows that if at least one of the features of the appearance of the product concerned by a contested design is not solely dictated by the technical function of that product, the design at issue cannot be declared invalid under Article 8(1) of Regulation No. 6/2002.
Key Observations By The Court
- The smooth surface of the upper face was not considered by the Board of Appeal.
- This smooth surface is a feature of appearance.
- It is not merely an absence of studs.
- It is not purely technical in nature.
In the present case, as is apparent from the contested decision, the Board of Appeal identified the features of appearance of the contested design (six) and found that all of those features were solely dictated by the technical function of the product concerned by the contested design, namely to allow assembly with, and disassembly from, the rest of the bricks of the set.
However, the court observed that the smooth surface of the upper face of the product concerned by the contested design is not included among the features identified by the Board of Appeal. It is a feature of the appearance of that product.
Burden Of Proof
Thus, it was held that the burden of proof is on the applicant for a declaration of invalidity to demonstrate that all the features of the appearance of the product concerned by the contested design are solely dictated by the technical function of that product; however, the EUIPO failed to do so.
Final Judgment
- The Board of Appeal failed to identify all features of appearance.
- Not all features were purely technical.
- Article 8(1) was infringed.
Thus, the court held that the Board of Appeal infringed Article 8(1) of Regulation No. 6/2002 in the present case in that it did not identify all the features of appearance of the product concerned by the contested design and did not establish that all of those features were solely dictated by the technical function of that product.
The court annulled the decision of the board of appeals and upheld the decision of the Cancellation Division rejecting the application for a declaration of invalidity.
Legal Significance Of The Case
This case clarifies that for a design to be invalid under Article 8(1), all features must be dictated solely by technical function.
The recognition of even a single non-functional feature ensures continued protection, thereby strengthening the scope of design rights in the European Union.
- Strengthens protection for industrial designs
- Encourages inclusion of aesthetic elements
- Limits misuse of technical function doctrine
This ruling may encourage manufacturers to incorporate minor aesthetic elements to retain design protection, even in function-driven products.
