Background of the case

On 2 February 2010, the applicant, Lego A/S, filed an application for a registered Community design at EUIPO, which was published in the Community Designs Bulletin N. 32/2010 of 11 February 2010, as follows:

On 8 December 2016, the German toy company Delta Sport Handelskontor GmbH filed an application for a declaration of invalidity claiming that all the appearance features of the product concerned by the contested design were dictated solely by the technical function of the product and were therefore excluded from protection under Article 8(1) of that Regulation.

In this case, on 30 October 2017, EUIPO dismissed the application for a declaration of invalidity on the ground that the technical function of the building block was to interconnect with other building blocks in order to play, and that it had not been demonstrated that the performance of that function was the only factor that had determined the appearance characteristics of the product concerned by the contested design.

The intervener in these proceedings filed an Appeal on 10 April 2019, before the Board of Appeal. This was upheld as the Board identified the various characteristics of the appearance of the product, and considered that all of them were dictated exclusively by the technical function of the building block itself, which allowed it to be assembled with other building blocks in the set.

Against that decision, LEGO, appealing to the GC, argued the application of an exception embodied in Article 8(3) of the Regulation, according to which the validity of designs allowing the assembly or multiple connection of mutually interchangeable products within a modular system is recognised, provided that the mechanical adjustments of this type of product may constitute an important element of the innovative characteristics of the latter and a fundamental advantage for their commercialisation.

Decision of the General Court

The General Court finds that the Board of Appeal erred in law by failing to assess correctly whether the conditions for the application of the abovementioned exception were fulfilled.

As regards the relative examination for the determination of the validity of the design on the grounds raised here, the GC provides for a three-step analysis:

  1. Determine the technical function of the product;
  2. Identify all the features of the appearance of the product;
  3. Confirm whether these characteristics are exclusively imposed by the technical function of the product in question.

That being so, the Court notes that the Board of Appeal did not properly identify all the characteristics of the appearance of the product, being this a necessary condition for a declaration of invalidity of the design that such appearance is to be dictated exclusively by the technical function. Specifically, the Court finds that the brick in question has a smooth surface on each side of the row of four studs on the upper face and the GC notes that this feature is not among those identified by the Board of Appeal.

The judgment therefore considers that EUIPO infringed the provisions of the Regulation, in so far as it did not identify all the features of appearance which make up the product to which the contested design refers and, furthermore, did not demonstrate that all those features were dictated solely by the technical function of that product; since, although it is for the applicant for a declaration of invalidity to prove that point, it was EUIPO’s obligation to confirm that that technical function is indeed the sole determining factor of those features.

Consequently, the General Court annulled the decision of the Board of Appeal, finding that it had not correctly assessed all the elements of the design at stake.

Judgment of the General Court of 24 March 2021 in case T-515/19