Law & Practice

EUROPEAN UNION: Community Design for Lego Building Blocks Intact

Published: April 28, 2021

Ulrike Gruber

Ulrike Gruebler ERLBURG Rechtsanwaltsgesellschaft mbH Berlin, Germany INTA Bulletins—Europe Subcommittee


Aliona Saalo

Aliona Saalo Brann AB Stockholm, Sweden INTA Bulletins—Europe Subcommittee

The General Court of the European Union (GC) has ruled that a Community design registered by Lego for building blocks from a toy building set in 2010 remains registered (judgment of March 24, 2021, Case T-515/19). With its judgment, the GC overruled a prior decision of the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO).

Lego is the proprietor of the following Community design, registered since February 2, 2010, under registration number 1664368‑0006 in relation to building blocks from a toy building set:

LEGO logo

The company Delta Sport Handelskontor applied for a declaration of invalidity of this Community design. The Board of Appeal of EUIPO found in 2019, that the features of appearance of the product covered by the design were solely dictated by the technical function of the product. It declared the design invalid and Lego brought proceedings before the GC seeking an annulment of that decision.

The GC took a different view and pointed to an exception contained in the Community Design Regulation. It found that it may be correct that a Community design may not subsist in features of the appearance of a product. These features must necessarily be reproduced in their exact form and dimensions in order to permit the product to be mechanically connected to or placed in another product to perform its function. Despite this, the mechanical fittings of modular products may constitute an important element of the innovative characteristics of such products and present a major marketing asset. The EUIPO did not take this into account, the GC said.

Further to this, the GC found that the Board of Appeal had not examined all features of the design registration. A design shall be declared invalid only if all features of its appearance are solely dictated by the technical function. If, however, one of the features is not solely predefined by the technical function, the design cannot be annulled. The Lego brick in question has a smooth surface on either side of the row of four studs on the upper face. That feature was not included in the evaluation of the Board of Appeal although it is a feature of appearance.

According to the GC, the Board of Appeal infringed the provisions of the Community Design Regulation, as it did not identify all the features of appearance of the product covered by the contested design. It also did not claim that all those features were solely dictated by the technical function of that product.

As a result, the decision of EUIPO was set aside and Lego’s design was allowed to remain registered.

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