March 2021, the General Court of the European Union handed down their judgement on an appeal filed by Lego A/S in respect of Lego’s registered design number 1664368-0006:
Lego was successful in defending their registration, overturning an earlier decision by the Board of Appeal at the EUIPO to revoke the design.
This case explores the interplay between designs that have characteristics dictated by their technical function and designs that require certain form and dimensions in order for them to fit with other products. It also provided guidance on the extent to which an appellant can introduce new arguments on appeal – particularly citing an otherwise unconsidered Article of the Community designs legislation.
Community designs before the EUIPO are governed by the implementing Regulations for Community designs - Regulation No. 6/2002. Under Article 8(1) of those Regulations, a Community design shall not subsist in features of appearance of the product which are solely dictated by the product’s technical function. Furthermore, under Article (2) a Community design shall not subsist in features of appearance of the product which must necessarily be reproduced in their exact form and dimensions in order to permit the product in which the design is incorporated, or to which it is applied, to be mechanically connected to or placed in, around or against another product so that either product may perform its function. Although quite a mouthful, these clauses essentially dictate that design features that are essential for a technical function, or that are needed for enabling the product to fit with another product, fall outside the scope of protection. As a result, if all the design features are solely dictated by the product’s technical function, and/or they are all simply to enable the product to fit with another product, then the scope of protection is effectively nullified and the registration is invalid.
In the appealed decision for this case, the Board of Appeal at the EUIPO had identified the following features as being the defining characteristics of the appearance of the building block: (i) the row of studs on the upper face of the brick; (ii) the row of smaller circles on the lower face of the brick; (iii) the two rows of bigger circles on the lower face of the brick; (iv) the rectangular shape of the brick; (v) the thickness of the walls of the brick and, (vi) the cylindrical shape of the studs. In their opinion, these design features were all solely dictated by their technical function as they allowed assembly of the brick with other bricks in the set and subsequent dismantling of that assembly. As a consequence, they found the scope of protection of the registered design to be nullified, and they issued a decision to revoke the registration. However, what was not considered by the Board of Appeal was the exception to the above clauses under Article 8(3) of the Regulation: a Community design…shall subsist in a design serving the purpose of allowing the multiple assembly or connection of mutually interchangeable products within a modular system.
In their appeal to General Court of the European Union, Lego argued that the Board of Appeal had erred in its application of Articles 8(1) and 8(2) - particularly that creative aspects of the design had been ignored and that the list of features of the design, as used by the Board of Appeal at the EUIPO, was neither agreed nor complete. They also argued that the exception of Article 8(3) should apply.
As the exception under Article 8(3) was being raised for the first time, careful consideration was needed to determine whether the argument was “out of time”. After all, it is a common practice before the General Court that new facts or evidence cannot be introduced at such a late stage of the procedure. However, as argued by Lego’s attorney, the exception under Article 8(3) is neither a new fact nor new evidence, but is instead an explicit part of the implementing Regulations for Community designs, and as such it could be raised for the first time at this late stage of the procedure. The General Court agreed and held that Article 8(3) could be considered at these further appeal proceedings.
The General Court then considered the application of Articles 8(1), 8(2) and the features that characterise the design. In this latter respect, an additional feature was discussed - the smooth surface on two sides of the row of four studs on the upper side, argued to be one of the creative aspects of the design.
The EUIPO argued that the absence of studs (leading to the smooth surface) is a technical characteristic. In their opinion the absence of studs would allow two bricks to rotate when they are connected by a single pellet at the end of the row, thus leaving the possibility of forming a curve. They also considered the absence of side studs to make it possible to construct steps which are not obstructed by the studs. However, it will be recalled that the mere technicality of a feature is not enough to render a feature outside the scope of protection. Instead it is necessary for features of appearance of a product to be solely dictated by its technical function in order for them to be excluded from the scope of protection.
It was also observed that the decision at issue did not consider this additional characteristic of the design, even though it is a characteristic of the appearance of the product.
Following this, it was decided that the decision from the Board of Appeal before the EUIPO did not identify all the characteristics of the appearance of the product concerned by the contested design and thus that they had not established that all of the features of appearance were solely dictated by its technical function. As such the appeal was successful and the decision to revoke the design was annulled.
This effectively ended the procedure as there was no longer a decision in place to revoke the registered design. As a result, the General Court did not need to proceed further with considering the relevance of Article 8(3) on the registrability of the design characteristics, although as indicated above they had confirmed that it was permissible to do so as it was not a late filed fact or late filed evidence, but was instead a fixed and considerable part of the implementing Regulations.
Although it is a shame that the ultimate relevance of Article 8(3) was not considered on this case, it is good to see the the courts recognise importance of considering all characteristics of a design when considering the validity of a technical design. After all, many designs can have features that have a technical function, but that does not mean that they will necessarily fall foul of Article 8(1) or Article 8(2) of the implementing Regulations. After all, if the design features are also chosen due to aesthetic considerations, then there is every reason to expect the design to be validly registrable in Europe, assuming it is a new design!