In a decision of 24 March 2021 (T- 515/19), the General Court of the European Union overruled the previous decision of the Board of Appeal at the EUIPO, which in 2019 had declared the famous Lego brick already registered as a Community model to be invalid. The ruling of the Board of Appeal of the EUIPO had in fact established that it was not possible to protect as a model the well-known Lego brick because its shape is imposed by the functional characteristics of the product. In 2016, Delta Sport Handelskontor, a German toy manufacturer and competitor of Lego, filed a nullity action against the above-mentioned Lego model, claiming that it was contrary to the provisions of Regulation 6/2002 on Community design ("CDR"), which prohibit the registration as a design of products (or parts of products) whose external appearance (the object of protection) is dictated solely by the technical function of the product itself.
According to Community law (Article 8 CDR, as well as Italian law, Article 36 of the Industrial Property Code), products, or parts of products, the external characteristics of which are dictated solely by the technical function of the product, cannot be validly registered as designs. Basically, the shape of a product can be protected even if some of its features are functional, but only if the technical result to which they are predetermined can also be obtained with alternative shapes: in such cases, in fact, the designer's choice, although conditioned by functional reasons, is still discretionary. Furthermore, features of the appearance of the product which must necessarily be reproduced in their exact form and dimensions in order to allow the product to be mechanically connected to another product, or to be placed inside another product so that the latter can perform its function, cannot be registered as designs. However, the legislation provides for an important exception for so-called modular systems: by way of derogation from the prohibition of registration as a model or design of shapes imposed by the technical function, Article 8, last paragraph, CDR allows the registration of products or parts of products when their shapes have "the purpose of allowing the multiple joining or connection of interchangeable products within a modular system". Modular products are products characterised by interchangeability and modularity in a multiple joining system. The products in question must be designed so that they can be connected to each other in different combinations.
The exception is justified by the fact that in the case of modular systems (as opposed to spare parts, for which the exception does not apply), the imitator could enter directly into the market for finished goods by offering himself a complete and autonomous system competing with that of the owner of the first model. While the spare part is therefore a functional part of the product, the part of the modular system is itself the product and benefits from the exception under Article 8 CDR. Well, in a decision of 10 April 2019, the EUIPO Board of Appeal, at the request of the German company, had held that the Lego model was void because all the aesthetic features of the product were, in the opinion of the Office, solely dictated by the technical function of the product, namely to allow assembly and disassembly with the rest of the bricks. According to the Commission, that function is the only factor which determined the appearance characteristics of the product affected by the contested design. In particular, the Commission had taken into account the following elements: (i) the row of 'buttons' 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 larger 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 'buttons'. The Commission had therefore held Article 8(1) CDR to be applicable to the present case. Furthermore, since the features of appearance of the product covered by the contested design, as identified by the Board of Appeal, must be reproduced in their exact dimensions in order to enable them to be connected, they are also covered by Article 8(2) CDR.
The Board of Appeal also failed to consider Lego's objection on modular systems under Article 8(3) CDR as inapplicable to the present case and out of time. Faced with the declaration of invalidity, the Danish company therefore brought an action before the General Court of the European Union in order to have that decision annulled. The General Court upheld Lego's application on the basis of the following considerations: (i) For a design to be declared invalid, all the external features of its appearance must be considered and imposed exclusively by the technical function of the product to which they relate. Otherwise, if at least one of the features of the appearance of the product affected by a design is not imposed exclusively by the technical function of that product, the design cannot be invalidated. In the present case, the Lego brick has a smooth surface on two long sides and this feature is not among those examined by the OEIC, although it is a feature of the appearance of the product which does not appear to affect its functionality. (ii) The General Court also clarified the correct assessment procedure to be followed with regard to the validity of a design within the meaning of Article 8 CDR: it is necessary, first, to determine the technical function of the product concerned, second, to analyse the characteristics of the appearance of that product within the meaning of Article 8(1) of the Regulation and, third, to examine, in the light of all the relevant objective circumstances, whether those characteristics are dictated exclusively by the technical function of the product concerned.
In other words, it is necessary to examine whether the need to fulfil that technical function is the sole factor which determined the designer's choice of those characteristics, without any other considerations, in particular those relating to the visual appearance of that product, having played any role in the choice of those characteristics. (iii) Finally, the General Court's complaint concerned the failure of the EUIPO Commission to take account of the exception under Article 8.3 CDR on modular systems, which may well apply to the present case. The Lego brick therefore remains valid as a registered Community design with the consequence that the protection of 25 years from the date of registration applies to it. Moreover, it cannot be reproduced in its individualising features by competitors within the meaning of the Regulation.